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5 Famous Trademark Cases to Follow

trademark cases

Big brands struggle with trademarks too. Marvel, Porsche, Tous, Domino’s — all know what it is like to defend their trademark rights in court battles.  Whether these are copycats trying to benefit from their reputation or the complexities of trademark law restricting brands from registering their trademarks – there are a few interesting stories to tell. We prepared some recent famous examples of trademark cases when famous brands either had to file suits on their ТМ infringement or prove their right to actually register their trademark. 

Porsche’s Acceleration Sound Mark

Luxury car manufacturer Porsche attempted to register  a 16-second sound of its revving engine as a trademark. But the application was rejected by the European Union Intellectual Property Office (EUIPO) because the sound was not distinctive enough. However, the EUIPO found that this simple sound without complexity or distinctive features was not unusual or memorable and did not indicate a specific commercial origin. People would simply think it was a random car accelerating.

Porsche defended its sound mark by arguing that it was a futuristic electronic musical composition that was melodic and memorable. The company cited examples of other short sounds that are easily recognizable by the public, like the lightsaber sounds in Star Wars. However, the EUIPO found those movie example references from the 80s and 90s to be irrelevant with today’s greater consumer choice.

The EUIPO decision reiterates that even if marks have been accepted by national trademark offices within the EU, this does not mean the EUIPO will view them the same way. This can lead to inconsistent decisions and differing protection across territories.

Porsche appealed the decision to the EUIPO Boards of Appeal in early September, so the matter is not fully settled yet. Overall, registering sound trademarks remains difficult without evidence of acquired distinctiveness through use.

porsche trademark case
Source: Unsplash

Tous Teddy Bear Trademark Case

Spanish jewellery retailer Tous registered a teddy bear silhouette as a trademark for jewellery. Polish jewellery company Apart attempted to invalidate this EU registration, arguing the shape was not distinctive enough and could not fulfil its essential function of indicating origin.

However, the EU General Court dismissed this claim. The Court noted that while jewellery pieces can indeed take the form of a teddy bear, this alone was not enough to find that the disputed mark constituted a 2D representation of the shape of the goods. The Court went on to say such a finding would prevent any other use of the disputed mark as a figurative sign.

The Court agreed with the EUIPO Board of Appeal that Apart had failed to show the disputed mark gave substantial value to the goods at issue. The Court pointed out jewellery pieces mainly consist of rings, necklaces and earrings, and it was unlikely these items would take on the shape of the mark itself.

The Court decision is a victory for trademark owners and consumers. This trademark case serves as a reminder that companies cannot simply copy the names and trademarks of well-known brands to benefit from their reputation. Companies should take heed of this ruling and take steps to protect their trademark rights.

Marvel and DC Comics Fight for a ‘Superhero’

Marvel and DC Comics jointly own the descriptive trademark for the word “superhero” in the US. Therefore, anyone wanting to use that word commercially, such as in books, movies, games, etc, needs permission from them.

This surprises many people as “superhero” is now widely used in pop culture and mainstream culture. But when the trademark was granted to Marvel and DC Comics in 1981, the word was much more niche and referred mostly to comics from those publishers.

In the early 2000s, video game company Sega ran into trouble when trying to trademark the name “Gunstar Super Heroes” for one of its games. Marvel and DC Comics’ lawyers did not allow it. Some expected this would spark a campaign to “free” the word into public usage. However, the trademark still stands.

In current times, enforcement of old trademarks whose registration no longer seems warranted can be seen as unfair monopolisation of everyday words. Nevertheless, Marvel and DC Comics have so far successfully defended their rights through the courts.

marvel vs dc, marvel vs dc trademark case
Source: Unsplash

Hermès vs. Rothschild NFT Infringement 

Luxury fashion house Hermès filed a lawsuit against artist Mason Rothschild in the US for selling NFT artworks of fur-covered Birkin bags called “MetaBirkins”. Hermès claimed this infringed their trademarks, misled consumers and damaged the company’s reputation.

The court agreed with Hermès’ arguments that consumers could mistake Rothschild’s NFTs for official Hermès products, especially given the similar names and use of iconic Birkin bags as the base. Evidence of actual consumer confusion was also presented.

Rothschild defended himself by arguing his works were artistic expression protected by free speech rights. However, the court found in this case Hermès and consumer interests outweighed that.

Ultimately Rothschild lost the case and was barred from selling the disputed NFTs, as well as having to pay Hermès compensation of over $130,000. It is an important victory for brands fighting infringement of their rights in the digital art world.

If you’re looking for assistance with trademark registration in Ireland, USA, or UK, Chern & Co  TМ experts are here to help. Contact us and let us take you trough smooth trademark registration.

Domino’s Pizza vs Dominic Pizza

Pizza chain Domino’s Pizza successfully sued a small Indian restaurant called Dominic Pizza for having too similar a name and logo. The Delhi High Court ruled this was trademark infringement since customers might assume Dominic Pizza was affiliated with Domino’s.

The Court found the two names were phonetically similar, and the logos were also similar in terms of design and appearance. Of particular concern was Dominic Pizza’s use of a square logo with a similar font to Domino’s. This could mislead consumers about a connection between the companies.

The Court also noted Dominic Pizza operates in the same industry as Domino’s and offers comparable products and services. This increased the likelihood of customer confusion. Protecting consumer interests is critically important in the food and dining sphere where trust is paramount.

Consequently, the Court ordered Dominic Pizza to change its name and branding, withdraw its trademark application, and transfer any Domain names it owned to Domino’s. This is an important victory for trademark owners and consumers, sending a clear message that blatantly copying well-known brands will not be tolerated.

dominos pizza

The Bottom Line

Even large, established brands must vigorously defend their trademarks from copycats trying to freeload on their success. Taking infringers to court can consume substantial time and money. However, failing to protect a trademark can lead to losing exclusive rights. The cases discussed demonstrate that companies like Tous, Marvel/DC Comics, Hermès and Domino’s Pizza are willing to undertake legal action against trademark violations. This allows them to maintain control over their brand identities and prevent consumer confusion. Strong trademarks are invaluable corporate assets that must be actively monitored and protected.

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