What do Hogwarts and Narnia have in common? Beyond being fictional places, they are both trade marks of their respective fictional series. Many writers trade mark characters or places that are unique to their novels, as they prevent others from using these names and benefiting from the brand awareness associated with them. While it is a good idea to protect the intellectual property (IP) of your writing, you cannot trade mark all names and places. In this article, we set out the key things to consider when you trade mark fictional character or place names.
Trade marks are commercial tools that can help you protect the brand advantage of your book. To be able to trade mark fictional character or place names, the names must:
- be distinct from the names of products of other traders;
- not conflict with an existing trade mark;
- be used in relation to goods and services; and
- not be prohibited.
1. Distinctiveness of the Name
The first consideration when trade marking fictional character or place names is how distinct they are. A consumer must easily associate the fictional name with your brand.
Unique names, like ‘Scooby Doo’, are more distinctive and may be easier to trade mark than names that are common in real life. Common surnames are particularly difficult to trade mark as it is unlikely that they will be able to distinguish your brand.
For example, the name John Smith is common among Australians and does not distinctively identify a particular character. So, even if John Smith is the lead character’s name, it is unlikely that you will be able to trade mark it.
Similarly, the same principle applies to geographical names. Fictional places with unique names, such as Hogwarts, are more likely to be sufficiently distinctive and qualify for a trade marking.
When considering whether your trade mark is sufficiently distinctive, think about:
- how long you have been using the fictional name;
- how you plan use the name;
- publications and articles mentioning the fictional name;
- websites that mention the name; and
- general consumer perception.
2. Conflict With Existing Trade Marks
Potential trade marks that are similar to existing trade marks may cause confusion in the market and conflict with each other. When assessing similarity, consider the likeness of the:
- actual trade marks; and
- goods you wish to register in relation to the trade mark.
Begin by contemplating the trade marks themselves. Your trade mark will conflict with an existing trade mark if it is deceptively similar or identical to a registered trade mark.
‘Deceptively similar’ refers to the impression the trade mark leaves on a consumer. However, ‘substantially identical’ refers to the similarities between both trade marks.
When determining conflict between trade marks, consider the types of goods and services you wish to register in relation to the trade mark. While the obvious category of goods is books, many writers register their fictional character and place names in relation to a wide range of goods, therefore expanding the brands of them as authors and the fictional series itself.
Consider this before registering the trade mark, as if the goods and services registered are closely related to that of another trade mark, it is likely that the trade marks will cause confusion.
For example, ‘Narnia’ is a trade marked name registered in relation to certain products including books, computer games and films. Registering the name ‘Marmia’ in relation to books is likely to conflict with the registered trade mark ‘Narnia’. The similarity between the trade marks and the types of goods registered could lead to confusion among consumers. Before registering a trade mark, conduct a thorough trade mark search and seek legal advice to determine any potential conflicts.
3. Prohibited Trade Marks
Trade marking is not possible for certain words and symbols. If the fictional name falls under the category of trade marks contrary to law, the trade mark application will be rejected.
Some examples within this category are:
- the Australian flag;
- names of intergovernmental organisations; and
- defence terms, like the word ‘ANZAC’.
4. Use in Relation to Goods and Services
Trade marks must be used to mark specific goods and services. Before you register a trade mark, you need to know the types of goods and services that you will sell. For writers, the most obvious products are books. However, many fictional names become part of a greater brand and writers trade mark them acoss several categories.
For example, ‘Harry Potter’ is trade marked across a broad range of goods and services, including Christmas decorations and the training of magicians. Consequently, Warner Brothers has the exclusive right to use the fictional name on Christmas decorations and for magician training services.
As a writer, protecting your IP is vital. Many writers trade mark the names of fictional places and characters, giving them exclusive right to use the names on particular products.
However, trade marking is not available for all fictional names. To ensure your trade mark registration is successful, the name you are seeking to register must be distinctive. If you have any questions, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.
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