Every organization wants to avoid lengthy, intensive, costly, and resource-driven litigation for trademark contravention. Definitions can differ across the countries but within the U.S. organizations can be brought to court if there is any uncertainty, especially when conjoined with other identical resemblance surrounding purchasing channels, goods and services, and other factors. Sui generis factors can differ as well, but professional indicates the average cost of trademark litigation can be between $120k to $150k which is further subjected to indexation.
The number of resources it takes to defend your organization and brand in a lawsuit can be very depleting for any company, right from getting the logos to tm registration. Large organizations are not inevitably the most vulnerable to trademark contravention lawsuits, they are the ones who are likely to suffer in terms of deterioration in the public image when their cases hit the headlines.
Here, we will outline 9 such landmark cases related to trademark contravention, majorly of the brand, you must familiarise with. And how you can learn from it to avoid it in the future.
– China – 3M vs 3N.
Litigation by the 3M company against the Changzhou Huawei Advanced Material company limited for the utilization of 3N ensued in a win for 3N and remarkable damages for 3M. The judgment noted that, despite some variations in pricing and products, the infamy of the 3M mark and the fact that 3N had somehow managed to obtain market share and clients by using the identical mark-initiated contravention.
One analysis reckons that it could be evocative of trademark case ensues in a Chinese court, where such situations are taken solemnly. This stated case was intricate and abstract, 3N deviated into dangerous zones by imitating such a famous brand’s trademark. Later, it ordered that the 3M trademark had a high uniqueness and reputation. The verdict went in favor of 3M.
– U.S. – case between D2 holdings and the house of cards
Recently, Massachusetts based D2 holdings filed a litigation against the MRC II distribution company, which is the brand behind Netflix’s famous show house of cards. D2 has ordered the house of cards’ trademark for ‘entertaining goods and services’ from 2009 onwards, which has been already given or licensed to a gaming radio show dispensed by Granary media. MRC submitted a trademark for the house of cards various times for the show which first came on screen in 2013 and is currently running on the fifth season.
D2’s litigation demands various contravention types to cease, with the inclusion of gaming machines and fan merchandise. Presumably, MRC was conscious of D2’s holding of trademark, based on their persistent attempts to acquire a brand via the U.S. patent and trademark office. A setback can be in the dispensation company’s decision to alter the show’s name, based on their impotence to get a trademark—Sub judice matter.
– U.S. academy awards vs. GoDaddy.
Domain retailer GoDaddy and academy awards recently wrapped up a 5-year legal and tiring battle over the ‘cybersquatting’ concerns. Filed in 2010, the academy purported, GoDaddy’s decision to permit customers to purchase perplexing identical domain names like 2011Oscars.com enabled them to profit from persons who wanted to obtain these domains and accumulate revenue. There were around allegedly 57 such domain names that were sold by GoDaddy. The court ruled that GoDaddy did not have necessary mala fide intentions to profit from their sales. It was considered a landmark ruling in the cybersquatting space. The verdict went in favor of GoDaddy.
– South Korea – case between Louis Vuitton and Louis Vuiton Dak.
This can be labeled as one of the appalling examples of international trademark contravention, a South Korean fried chicken restaurant lately lost a trademark lawsuit with the designer Louis Vuitton. Court-ordered in the designer’s favor after inspecting the restaurant name was very identical to Louis Vuitton. Along with that contravention, the restaurant’s logo and packaging were also closely similar to the designer’s imagination.
The restaurant received the hefty fine of 14.5 million dollars for non-compliance, afterward altering their name instantaneously after the first order to Louisvui Tondak. Many brands can avoid that by not mirroring closely resembling brands. The verdict went in favor of Louis Vuitton.
– U.S. – case between Adidas and forever21.
Lately, Adidas submitted litigation against the forever21 (retailer clothing) purporting that forever21’s products, including ‘three stripes’ design, compose counterfeit products. Adidas announces that they have infused millions to build and safeguard the three-stripes design, which they possess as a trademark element of their brand and several other patents.
No representatives from both parties have released any comments related to the lawsuit from the beginning. It has not delivered its ruling on this matter. Given the resemblance between brands’ distribution channels and products, a retailer might avoid the possible lawsuit against themselves based on recent designs—Sub judice matter.
– U.S. – Segway vs Swag way and Razor.
The two-wheeled standing scooter has been aligned to the Segway since 2001. As of now, there are a plethora of lawsuits circling Segway and its rivals. Segway filed litigation against Kickstarter-backed Hovertrax, which is now possessed by Razor along with swag. Further, Razor has also filed a lawsuit against swag. Swag way is currently dealing with the extensive safety and accident litigation for incidents revolving around fires and falls. As the court’s judgment has not arrived yet, it remains to be seen what is lying ahead. Some of these cases are primarily motivated by the fundamental conception of brand protection and desire to distinguish their brand from Swag way’s associated safety protocols.
– India – American eagles vs. pantaloons.
American eagles’ parent company, Retail Royalty company, has submitted a lawsuit in Delhi high court against the pantaloons fashion and retail. Litigation purports that the logo and brand are illusionary identical to its AEO brand and logo.
While retail royalty companies are based in the U.S., this case is one example of international retail copyright contravention. Fashion united has also delineated that Gap has lately submitted a lawsuit against the Indian brands selling its products under the Gap Two name even as they were following the process of trademark renewal in India but not elsewhere. Hence, it is vital to safeguard and monitor your trademark on an international stage.
– U.S. – lucky 13 vs. Taylor swift.
Taylor swift has lately resolved litigation initiated by Blue Sphere, a clothing company that possesses the ‘lucky 13’ trademark. The organization filed a lawsuit when Taylor started selling her fan merchandise named ‘lucky 13’ and launched ‘lucky 13’ sweepstakes.
When she insisted that 13 is her lucky number and asserted harassment by the plaintiff, the litigation result was not released in the public domain. Courted initiated a confidential agreement between both the parties and she later begun to proactively trademark other lyrics and phrases she uses to avoid future entanglement.
– U.S. – Starbucks vs. Freddocino.
Starbucks filed litigation against NY coffee culture cafes’ parent company for launching a drink named ‘Freddocino.’ The lawsuit mentioned that not only it was identical to Frappuccino, but the structure includes the similarity in the name that can create confusion in a marketplace and could potentially deteriorate Starbucks’ brand equity.
Starbucks has the same trademark and purported that coffee culture created resembling illusionary packaging to make it look like the term ‘Freddocino’ is trademarked where it was not. Later, they changed the name to ‘Freddo.’ Coffee culture could have circumvented it by avoiding contravention on protected trademark, with a yearly value of an estimated $1.5 billion.
How you can avoid the trademark contravention litigation
As the aforementioned cases have reflected that outcomes could have been avoided with apt trademark research beforehand. It is pertinent to do a trademark search even if it’s time-sensitive and abstract. Incomplete search and human error could be detrimental for your brand, as we have learned from the above cases.