The founders of a big Apple fitness centre dubbed “Health and the City” admitted the famous TV show using the name’s last three words was in the back of its mind, but did this warrant a frontal attack by lawyers for “Sex and the City”‘s owners Home Box Office? Ray Coyle reports from the city that never sleeps.
Topic: Brands
Who: HBO
When: October 2007
Where: New York
Law stated as at: 30 November 2007
What happened:
A fitness centre in New York, called "Health and the City" has drawn the eye of HBO (Home Box Office), the premium television programming subsidiary of Time Warner behind the "Sex and the City" program.
HBO have been particularly active in protecting their brand and appear to have taken a very broad view of what will confuse consumers into thinking there is an association with the show. HBO have previously opposed a number of attempts to register marks ending in "and the city" and it does not appear to make any difference to HBO what word is put before this phrase, be it "handbags, "socks" or "pets".
Nor does HBO's claim appear to be restricted to marks ending with "and the city" as the purveyors of handbags, socks and pets found out when they tried to use "in the city" instead. The owner of the fitness centre was presumably unaware if this litigious history when she chose the name for her fitness centre. HBO filed for, and were granted, an extension to the application so that they could negotiate with the health club.
Somewhat surprisingly, given their previous objections, one of the suggestions that HBO have reportedly put to the centre is a change to "Health in the City". At the time of writing this article, this proposal had been rejected.
Why this matters:
Brand owners, particularly, in the United States, are becoming more vigilant in protecting their brands. Given the plans to release a movie version of the show in 2008, HBO are probably particularly sensitive about this particular brand. There does not appear to be any suggestion that the fitness centre was trying to do anything to suggest a connection between the centre and the show. HBO's objection is on the grounds of confusing similarity only.
It is not as easy as one might think to avoid such situations. A trade mark search for "Health and the City" would not have returned any results and, on that basis, the centre may have felt that they were safe to proceed. However, in the US, as in the UK, a mark does not have to be exactly the same to be infringing.
Given the potential expenses involved in re-branding a particular name or mark if this is found to infringe a third party's registered mark and the extent to which owners of valuable brands will go to protect their property, it makes sense to check business and product names as thoroughly as possible before using them.
