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I'm going to release an open source project, let's call it ABC. My project is a piece of software that is non-commercial. However, ABC already exists as a trademark for an existing company.

My project is software. This company sells a consumable product. Would I be infringing on their trademark, or is it okay because they are in completely different "realms"?

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See Section 10 of the Trademark Act 1994. In particular: Ask yourself if your 'sign' is similar to ABC's trademark, and whether it is used for the purposes of distinguishing a similar good from the consumer product of ABC?

You are selling a software product, which presumably has a sign affixed to it that is similar to ABC's trademark, and that is what is causing you concern. However, since your software product is arguably not a 'similar good' to ABC's consumer good, you shouldn't have a problem.

  • Still, if you called your software Coca Cola, although it is not a beverage there is a very strong association in my mind to the Coca Cola beverage brand that is so ubiquitous. As such I would think you derive value from their trade mark and would think that should be infringement, although I would be interested to hear the legal arguments; perhaps they actually have an app for marketing purposes etc. – ScarletPumpernickel May 24 '17 at 23:28
  • Yes, that would fall under 10(3), which is very fact specific. Calling a software Coca Cola is orders of magnitudes different from calling it Quinlan for example. 'Unfair advantage' is effectively free-riding, and 'detrimental' effectively means your alleged infringing use of the trademark actually reduces, in the eyes of the 'public', the attraction of the trademark you are infringing. It would be quite an argument for a company selling consumable products to say the use of similar signs on a software allows the software company to free-ride off the consumer product company, etc. – Huntling May 25 '17 at 11:36
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The primary use of a trademark is to identify a specific product or producer. To know whether your similar trademark would infringe on theirs, you have to answer the question of would people confuse me for them, or confuse my product for theirs?

If this is likely, you're at risk of infringement. If you're not sure, you should seek independent advice from someone familiar with trademark cases and law.

If it's unlikely or impossible to have confusion, of course you may be sued anyway, because trademarks lose validity if they're not defended. It's not that you actually infringed, it's that the other company has to (look like they) care about the possibility of it.

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    Nij: "trademarks lose validity if they're not defended" - not in the context you gave: "If it's unlikely or impossible to have confusion." Trademarks don't lose validity if their owner doesn’t sue when it’s unlikely or impossible to have confusion. Trademark owners are not required to look like they care about the possibility of infringement when infringement was unlikely or impossible. See estoppel by laches or acquiescence. – mklee Nov 25 '16 at 20:20
  • And worse, in the US at least, bringing frivolous claims opens a trademark owner to payment of the other party's costs: millercanfield.com/media/article/… – mklee Nov 25 '16 at 20:34
  • Claims without merit are not required, and actively discouraged by the law and by the courts. – mklee Nov 25 '16 at 20:35

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