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Trademark infringement cases startups can learn from
Trademark infringement occurs frequently in the business world. Not every company will pursue legal action to protect their trademarked product or services every time it happens, but they do it often enough to learn some lessons
This is a user generated content for MyStory, a YourStory initiative to enable its community to contribute and have their voices heard. The views and writings here reflect that of the author and not of YourStory.
The importance of trademarks is known to everyone. It is perhaps the easiest way with which a brand can associate with its customer base, for the trademarks are synonymous with the brand. The most effective communication tool which lets a brand utilize their social media space effectively. It can be an important protection against rival competitors stealing a successful business plan without paying compensation. These reasons make trademark infringement a dodgy issue for companies who’ve put in a lot of efforts in obtaining trademarks.
Snapdeal getting uninstalls and bad reviews because of the Snapchat fiasco is not an infringement, but a clear lesson of why your trademark should be 100% unique.
India recently released their new IPR policy along with new trademark pricing and rules in hopes of making people more aware of trademarks and also improving the ease of doing business metrics. That said, infringements are still hot in the startup sector and the founders should always be on the top of their game to avoid costly hassles. Here are some landmark trademark infringement cases to take learnings from:
South Korea: Louis Vuitton v. Louis Vuiton Dak
In one of the more shocking examples of international trademark infringement, a South Korean fried chicken restaurant recently lost a trademark battle with designer Louis Vuitton. The court ruled in the designer's favor after determining that the restaurant's name of Louis Vuiton Dak was too similar to Louis Vuitton. In addition to the name infringement, the restaurant's logo and packaging closely mirrored the designer's iconic imagery. The restaurant was ultimately hit with another 14.5 million fine for non-compliance, after changing their name immediately after the first ruling to LOUISVUI TONDAK. Many brands can avoid similarly expensive legal battles by avoiding mirroring their brand closely after another, even if the products and purchase channels have nothing in common. The verdict was given in the favour of Louis Vuitton.
Google Vs. BMW
Google’s decision of announcing Alphabet could have created a stir and stimulate a spat between GOOGLE AND BMW. Larry Page said that Alphabet would simply be the owner of different brands including Google itself, Android, YouTube and others. In other words, it will be the corporate and brand parent. Google’s name change would not have been so interesting were it not for this potential trademark dispute. Just one day after announcing the big change, Alphabet faced legal issues due to BMW whose subsidiary is also called Alphabet. BMW’s Alphabet has been part of the German family for a long time. They own the rights in the ‘Alphabet’ trademark and their current international registration has existed since 1998. Furthermore, the new company will not be able to use the alphabet.com domain name as it is also owned by the German auto manufacturer.
An article by IT ProPortal reports that a BMW spokeswoman stated that neither Larry Page nor anyone else on behalf of Google has contacted them prior to the Alphabet announcement to acquire the trademark or the domain name. BMW is not intending to sell the trademark either.
International Foodstuffs Co LLC Vs. Parle Products Private Limited And Anr
.The Plaintiff, International Foodstuff Co. LLC is a Dubai-based company which sells various flavors of ice-cream under the mark "LONDON DAIRY. The Defendant, Parle Products Private Limited, started selling boiled confectionery sweets under the mark "LONDONDERRY" in 2011. The Defendants have used the mark continuously since then and have also applied for registration of the mark, with the application currently pending. The Plaintiff on learning that the defendant was using the mark, "LONDONDERRY" filed the present petition for an injunction on grounds of trademark infringement and passing off. The Bombay High Court vide its order dated April 11, 2016, held that there is no law that says that there are no laws which treat similar phonetic names as cases of trademark infringement. Since the Plaintiff has sought injunction only on the basis of this phonetic similarity and there is no other basis for this action at all, the Bombay High Court held that there is not sufficient warrant for a grant of injunction and dismissed the Notice of Motion without costs.
Apple Corps vs. Apple Inc.
Who has the right to trademark the word “apple,” the Beatles or Apple Inc.? The Beatles came first, with their music company Apple Corps, and then eight years later Steve Jobs introduced Apple Inc. to the world. The two mega-corporations have battled it out in court over the years. After the first round, Apple Inc. agreed to pay Apple Corps a cash settlement and to stay out of the music business. But with the advent of iTunes, the legal wrangling between the two giants heated up again. They reached an apparent settlement after Apple Inc. agreed to purchase Apple Corps’ trademark rights and then license them back to the music company. As it stands now if your company has anything to do with either music or computers you’d best stay far away from the word “apple.” Try another fruit. Or better yet, get a legal services company to handle your trademark research, application, and maintenance to avoid any legal hassles.
Wrigley’s Doublemint
The Wrigley Company wanted to trademark the name “Double mint,” which, on the face of it, seems reasonable enough. But in Europe, at least, they can’t do it. The ruling against Wrigley stated that the word “Doublemint” lacks an imaginative element. Whereas, Proctor & Gamble were able to trademark their product name Baby-Dry with no difficulty in Europe.
If you plan on marketing in Europe you should become very familiar with the Madrid Protocol, which explains how trademarks are registered and enforced in the European Union. Thus, local set of protocols play their own important role.
Trademarks filing is a mandatory step for all newly registered startups, protecting the brand before spreading the word is a no-brainer in today's age, consulting a startup lawyer can not only help you file your trademark but also help you understand how to reduce the chances of facing an infringement.