Stewart has moved to the chic town of Katonah in upstate New
York where she now lives next door to Ralph Lauren and where her
neighbours include Susan Sarandon and Tim Robbins, and Glenn
Close.
Stewart has applied to trade mark the name Katonah for her
homeware goods such as paints, lighting and accessories. Residents
are protesting and have formed a campaign, Nobody Owns Katonah.
Local business owners fear that they may have to change the name
of companies named after Katonah, but trade mark specialist Lee
Curtis of Pinsent Masons, the law firm behind OUT-LAW.COM, said
that their fears may not be well grounded.
"You have a defence in trade mark infringement actions, you can
use a geographical term in a descriptive sense, so people from
Glastonbury or people from Katonah can say 'I am from Katonah' or
'I have a business in Katonah'," Curtis said.
"If that's the case then they're perfectly free to use the term
in a descriptive sense, so no-one who's got a legitimate interest
in or trades in those geographical areas will be stopped from using
the terms," he said.
Speaking to weekly technology law podcast OUT-LAW Radio, Curtis said that fears that
Stewart would 'own' the Katonah name for all purposes are also
unfounded. He said that since a word or phrase can only be trade
marked for a limited set of goods or services, Stewart would have
no blanket rights to the name.
It is perfectly legal to trade mark the name of some towns for
some purposes, but that right does not extend to all places, said
Curtis.
"It depends on the size of the town or city and whether that
city or town is well known for the goods for which you're seeking
protection," he said. "So for example it's unlikely you could get a
registration for the simple word London because various different
businesses operate in the London area, it's so big."
"And, for example, Cheddar, you couldn't register that for
cheddar cheese, because the Cheddar area is well known for cheese,
so it very much depends on the size of the city or area and whether
it's well known for the goods or services," he said.
A similar problem arose in Glastonbury last year. Michael Eavis,
the farmer behind the Glastonbury music festival, wanted to trade
mark the word Glastonbury as it applies to performing arts
festivals. Curtis said that Eavis and the town had constructive
dialogue and were able to resolve the matter between themselves
once everyone understood exactly what the trade mark process
involved.
"It's not so much about trade mark law as may about patting down
a few ruffled feathers," said Curtis.
