What do Snoop Dogg, Donald Trump and Nike Have in Common?

August 14, 2018

ANSWER: all of them have recently been involved in some juicy examples of trademark litigation.

Since trademarks are typically one of a company’s most valuable assets, brand owners frequently go to great lengths to protect them. Trademarks potentially give everlasting monopoly rights, so a great deal is at stake in these often fierce and protracted battles. Here’s a roundup of some of the more interesting recent cases and the lessons they highlight.

Serial filers and bad faith registrations

First up is a case involving German-born entrepreneur and serial trademark filer, Michael Gleissner, who is no stranger to finding himself in court for trademark infringement. A couple of high-profile figures who have recently and successfully contested his trademark applications include the likes of Donald Trump and Snoop Dogg after Gleissner attempted to file the marks ‘TRUMP TV’ and ‘SNOOP’.

Trademarks applied for in bad faith (e.g. to stop somebody else using the mark) are refused and this was the basis on which Trump and Snoop Dogg argued and won their cases. Gleissner has filed more than a whopping 4,000 marks in various jurisdictions over the years and these are not the first of his applications to have been refused on the grounds of bad faith, with the courts citing a “well-evidenced pattern of abusive behaviour”.

Celebrities and risk of “reverse confusion”

In contrast is a case involving a celebrity on the receiving end of legal proceedings, proving that celebrities aren’t always in the driving seat when it comes to trademark wars.

The perfume logo owned by reality star Kim Kardashian’s company trademark argument has seen it attacked on the basis of its similarity to a registered trademark owned by Vibes Media. Both logos comprise the word ‘Vibes’ inside a speech bubble shape and both are used on perfume bottles. Vibes Media argues there is a “strong likelihood” that consumers will mistakenly believe the perfume is authorised, endorsed or sponsored by them.

Celebrities tend to police their precious branding aggressively but here we have a twist; a brand wishing to avoid being accidentally affiliated with a celebrity, in what is essentially a case of “reverse confusion”. The outcome remains to be seen but Vibes Media could be an in for a windfall if they succeed, as they are seeking monetary damages and the perfume brand is reported to have made Kim K millions to date.

Rage against Nigel Farage

Notorious courter of controversy, Nigel Farage, has also been in the trademark firing line recently with rock band Rage Against the Machine outraged by his podcast ‘Farage Against the Machine’. The politician’s far-right ideologies are a far cry from the image the band seeks to convey and they have demanded that he stop “brazenly and unlawfully” diluting their brand and taking advantage of their name and logo without permission.

The band are no doubt regretting having failed to renew their now expired trademark registrations, which would have put them in a far stronger position and enabled them to argue actual trademark infringement. A lesson to all trademark owners to monitor their marks and diarise renewal deadlines.

Nothing Beats a Londoner but Nike gets beat

Finally, in another case showing that it may not always be the big brands or names who come out on top, is that involving sportswear giant, Nike. London-based fitness label (LNDR) recently won a trademark infringement claim against Nike’s use of the mark ‘LDNR’ as part of its “Nothing Beats a Londoner” advertising campaign. NIKE failed to persuade the court that consumers would not confuse their mark with the claimant’s trademark, since LNDR is inherently descriptive (one of the bars to trademark registration) and would be perceived by the average consumer as meaning Londoner. The court disagreed and thought it could be seen as a brand name (at least in respect of clothing, being the use to which the mark was being put).

A word of warning, as demonstrated by this case, is that defendants in trademark opposition claims often counterclaim to try to invalidate the trademark(s) being relied on by the claimant. So it is crucial to think carefully before opposing a third-party trademark, as it can backfire and potentially lead to an attack on your own mark.

To find out more about which aspects of your brand or business may be registrable as a trademark and exactly what is involved in the process (including fees), get in contact with LawBite.

Remember, to check your business’ position regarding IP and trademark, please do make use of the Free Intellectual Property Checklist. To buy the right Trademark product for your business please enter an enquiry or call us today on: 020 7148 1066 and speak to a member of our friendly Client Care Team.

 

Laura lawbrief

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