No business, big or small, is safe from identity theft. Registering a trademark gives ownership of a brand so action can be taken to protect the owner’s rights and prevent a competitor from trading on the good reputation that owner has in a brand. It is an effective marketing strategy that upholds a brand’s name and sets it apart – legally – from its existing and potential competitors.
This year, we’ve covered some of the biggest news in trademark laws, legal cases and rulings. To welcome the year ahead, here is a roundup of the trademark industry’s events in 2017 just in case you missed an earlier newsletter:
Harley-Davidson, one of the most successful motor companies in the US, took matters to court against Urban Outfitters after the clothing brand released a line of ‘FPV HARLEY BODYSUITS’ in February.
This was not the first time Harley-Davidson filed charges against the clothing company. In 2014, Urban Outfitters sold shredded, cut-up and altered versions of Harley-Davidson’s apparel.
A statement from Harley-Davidson concluded that Urban Outfitters manufactured “Infringing Bodysuits” from ‘genuine Harley-Davidson products that [they] have altered and reconstructed into new products’, most of which bear the iconic Harley-Davidson trademarks. Other products in the line, on the other hand, appeared to be carrying the brand’s name without any genuine association to the motor company. This urged Harley-Davidson to accuse Urban Outfitters of ‘falsely [suggesting] that the Infringing Bodysuits are Harley-Davidson products’.
The fight ended in May after Urban Outfitters agreed to stop selling Harley-branded merchandise, genuine or otherwise.
The famous red sole is quintessentially Christian Louboutin. In fact, red soles in high-heeled pumps are trademarked in the United States, Russia, Australia and China. In Switzerland, however, a trademark battle on the red sole ensued earlier this year.
The Federal Supreme Court of Switzerland turned down Louboutin’s demand to trademark the red sole. They denied the appeal because the court ruled ‘an aesthetic element’ unworthy of a trademark.
Alex Brodie, a representative from Gowling WLG Law, said it is very important for brands to ‘frame [their] application for a trademark very carefully to avoid the colour being seen as simply aesthetic’.
Apart from winning last year’s US Presidential Elections, Donald Trump was also awarded 38 new trademark registrations in China. Trump is both a politician and a real estate mogul, and he now carries over 100 trademarks in China.
Although Senator Ben Cardin claimed the ruling unfair and dubious, China’s foreign ministry spokesperson, Geng Shuang, said that all Trump trademarks were received ‘in accordance with the law and regulation’.
IKEA, the world’s largest home retailer, lost to Bengalaru-based consulting company Aikya Global after fighting for the case since 2013. The Swedish retailer filed a lawsuit against Aikya Global for creating a brand name with a heavy phonetic resemblance to their own.
Aikya Global initially accepted the charges and amended their name to Ajira Global. The New Delhi court, however, reversed the injunction and ruled in favour of the Indian consultancy.
After a long-running trademark battle in the UK, Nestle KitKat failed to trademark its four-finger shape. Although ‘Have a Break’ and the brand’s packaging design are registered trademarks, UK’s Court of Appeal stated that the shape of a KitKat was not ‘distinctive enough to warrant a trademark’.
Toblerone and Coca-Cola have won trademark battles in the past, receiving approved registrations for their triangle-shaped chocolate pieces and signature contoured bottles, respectively. KitKat, however, has a design that is nearly identical to Kvikk Lunsj, a product owned by Mondelēz. Kvikk Lunsj has been on the market since 1937, providing further reason for the court to reject Nestle’s appeal.
Famous American sportswear brand, Under Armour, recently won a legal battle against Tingfei Long Sporting Goods, Inc., a Fujian-based sports shoe manufacturer. The Chinese debuted a collection of athletic apparel and footwear called ‘Uncle Martian’ with a logo that resembled Under Armour’s, their biggest competitor in the country.
In August, the People’s Higher Court of Fujian Province ruled in favour of Under Armour.
Since 1995, New Balance has been a recognised sport brand in China. Since then, brands like New Barlun, New Bunrer and New Boom have been charged with trademark lawsuits after allegedly copying the slanted ‘N’ logo. The American brand charged them around 10 million Yuan in costs and damages – the biggest lawsuit sum awarded to a foreign company in China.
Chinese companies have dealt with and plead guilty for many trademark cases over the years. New Balance’s victory urged the Chinese government to revisit their laws and strategies regarding intellectual property.
McDonald’s filed a lawsuit against their Singapore rival, Future Enterprises, after the latter named their instant coffee product ‘MacCoffee’. The General Court in Luxembourg, the second highest court of the European Union, sided with McDonald’s. The court stated that using the name ‘MacCoffee’ increases the probability that Future Enterprises was riding on the coat tails of McDonald’s.
Secure Your Trademark with Us
If you have questions or concerns regarding trademark laws and application processes in Australia, contact Pinnacle TMS for a complimentary 10 minute consultation which can be booked through our website, www.pinnacletms.com.au. You can call us on +61 2 9520 4366 or email email@example.com.