Magazine title snapped up, but with good intentions?

A dispute between two magazine publishers has broken out following the registration by one of them of the mark PAVEMENT, which was used by the other as a magazine title for over 10 years.

Pavement, a 'youth culture' magazine, was published for 13 years by Pavement Company Limited. However, a drop in advertising revenue forced editor and magazine founder Bernard McDonald to stop publishing the magazine in December 2006.

On January 3 2007 Jack Yan, who publishes the magazine Lucire, applied to register PAVEMENT as a trademark in relation to publications, magazines and other goods in Class 16 of the Nice Classification. The application was not opposed and the mark was registered in July this year.

Yan reportedly applied to register the mark because he thought that as the Pavement magazine was no longer being published, McDonald had abandoned the PAVEMENT mark. As such, Yan considered that he could legally adopt the mark himself. Yan thus set about protecting the mark, allegedly with the intention of relaunching the magazine. Yan stated that he planned to do this with the former Pavement team.

Having learnt of Yan's actions through a third party, McDonald filed his own application for the mark on September 28 2007.

Yan's registration will undoubtedly block McDonald's application. McDonald has reportedly requested that Yan cancel the registration and not use the PAVEMENT mark. If Yan does not comply, McDonald will be forced to file an application to invalidate Yan's registration.

Use of a mark in New Zealand gives rise to rights upon which a trademark owner can rely under the tort of passing off and/or the Fair Trading Act 1986. Therefore, McDonald should be able to prevent Yan from using the PAVEMENT mark, even though Yan has a registration for the mark. Even so, McDonald now finds himself having to challenge Yan's registration; no matter what his intentions, Yan was still the first to file an application to register the mark.

Carrick Robinson, James & Wells, Auckland