Expert Advice

Marathon: an event, a brand, a metaphor?

B2B Editor13 June 2016

Marathon: an event, a brand, a metaphor?

MARATHON. What is it? Well, it depends who you ask.

It is an event? Yes, of course it is. Just ask the thousands of people who run 42.195km in events conducted through the streets of most major cities each year, or the athletes preparing to run the Olympic marathon.

It is a brand? Yes. A search of the Australian trade mark register shows it is a registered trade mark (brand) for a range of owners in relation to a wide range of goods including tyres, watches, heaters, petrol, furniture and confectionery. That’s before you add other words or logo elements that include the word marathon (including trade marks for specific marathon events).

It is a metaphor for life? Yes. Oprah Winfrey, who is famous for things other than marathon running, is quoted as saying a marathon is a great metaphor for life, because you get out of it what you put into it. I agree.

So what’s all this got to do with an article on intellectual property law? Well, there’s a few things. I love talking about marathon running, and I love talking about intellectual property law, so this is an excuse to talk about both.

From an IP law perspective, it provides a good example of some specific concepts in trade mark law. These include:

1. Rights in a registered trade mark are limited to specified goods / services: I was surprised at just how many different proprietors own a registered trade mark for the word marathon. This highlights how registered trade mark rights are limited to claimed goods / services (or similar / closely related goods / services). Section 44 of the Trade Marks Act (the Act) will only prevent registration of similar marks if there is an overlap of goods / services. Further, infringement under section 120 of the Act only applies for similar marks with an overlap of goods / services. Accordingly, when filing a trade mark application, careful consideration needs to be given to the classes of goods / services, and the description of those goods / services.

2. Descriptive trade marks: None of the registered trade marks for the word marathon (on its own) are registered in relation to services associated with conducting running events. That is because section 41 of the Act prevents one party from having monopoly rights over descriptive words that other traders (without mal-intent) should be permitted to also use. Marathon does not, for example, describe tyres or furniture.

3. Rights are jurisdiction specific: Trade mark registrations are granted on a per country basis. I was not surprised, therefore, to see trade marks for marathons conducted in other countries appearing on the Australian trade mark register. We can assist with overseas trade marks being registered in Australia, or Australian trade marks being registered overseas.

If you would like to discuss trade marks, intellectual property law, or indeed marathon running, please contact Shaun Creighton on 02 6162 1639 or [email protected]
Contact us on (02) 6162 1639 or [email protected] for a no obligation and free of charge initial discussion about your possible legal requirements.