The second quarter of the year has just started, yet we already saw several trademark cases and legal battles arise. During the first three months of 2021, a number of big names across industries entered disputes regarding trademarks. These cases help shed light on intellectual property laws that can make or break a business.
Pinnacle TMS shares a round-up of a few trademark-related challenges we saw this past quarter and the lessons you can learn from them.
Lego vs. Delta Sport Handelskontor
Danish toymaker Lego won against its German competitor who claimed that Lego’s iconic brick design can’t be trademarked. Lego has owned the trademark since 2010, preventing other EU companies from using the design.
German-owned Delta Sport contested the trademark in 2016 and brought a complaint to the EU Intellectual Property Office (EUIPO). Delta Sport says that the features that Lego had trademarked are essential to “the technical function of the product”. As such, it would be difficult not to copy Lego’s design.
The EUIPO sided with Delta Sport, but Lego appealed to the European Court of Justice and its General Court. Ultimately, the Danish toymaker won the decision. The Court of Justice upheld the registered trademark, reasoning that Lego’s interlocking design is eligible for trademark protection.
France vs. France.com
In 1994, Jean-Noël Frydman registered a company called France.com Inc. in California to promote tourism in France. Owning both US and EU trademarks for the brand name, Frydman sued a Dutch company in a Paris court for infringing on its trademarks.
The French government intervened, saying that the French Republic had the sole right of using the name ‘France’ for commercial purposes. Under French law, the commercial use of ‘France’ by a private enterprise violates the Republic’s exclusive rights to its name.
The Court of Appeals published its decision late in March 2021, granting the French government sovereign immunity. This makes France immune to trademark infringement claims.
Zoom vs. RingCentral
Video communications app Zoom is suing RingCentral, a unified communications and collaboration service provider, for allegedly using its trademarks. The two companies have been partners for the last seven years, allowing RingCentral to resell Zoom’s videoconferencing services under its own RingCentral Meetings brand.
The two parties amended the terms of the partnership in 2020, which was a successful year for Zoom as it dominated the videoconferencing landscape. RingCentral announced that it will be transitioning to a Zoom-free product called RingCentral Video to ‘give our customers the best possible video meeting experience’.
However, RingCentral continues to resell Zoom’s services, including a ‘Powered by Zoom’ watermark on the display of its meetings product.
Zoom claimed that this is a bait-and-switch tactic, luring potential customers with the Zoom watermark. The company asks the court to order RingCentral to stop using the mark and to pay them damages for its infringement actions.
RingCentral responded by saying that Zoom’s actions are motivated by fear. They added that the teleconferencing app is attempting to hinder competition and restrict customer choice.
The dispute is still underway, pending the court’s decision.
Kerrygold vs. Kerrymaid
Kerrygold Irish Butter has long been a dominant brand in the US, Germany and other countries. But in 2019, Kerrygold faced a new competitor in Germany.
The Kerry Group seeks to sell its Kerrymaid butter label outside the UK and Ireland. The new player wants to trademark ‘Kerrymaid’, reasoning that ‘Kerry’ is a well-known location so Kerrygoldshouldn’t own sole rights to the name.
Kerrygold countered that allowing other butter and dairy brands to use the word ‘Kerry’ can harm the company. It can result in the dilution of its billion-euro brand.
In the end, Kerrygoldwon the decision, opposing the trademark registration of its new rival.
Tefal and the Elusive Red Dot
Tefal, a French cookware manufacturer, tried to register its red dot as a figurative mark. The red dot is located on the bottom of Tefal’s cookware.
The UK Intellectual Property Office (UKIPO) rejected the application. It reasoned that the red circle is devoid of distinctive character so consumers wouldn’t attribute it to any one brand.
To demonstrate the mark’s distinctiveness, Tefal conducted a survey across UK high streets. The company asked people, ‘In the context of cookware products, when you see this [the application] what, if anything comes to mind?’ Thirty-two per cent of the respondents answered with Tefal.
The hearing officer was unconvinced, reasoning that simple exposure to a sign doesn’t equate to acquired distinctiveness. In the end, Tefal failed to secure ownership of the red dot.
Printer Cartridges and the New Exhaustion Principle
The Australian High Court adopts the exhaustion principle. This means that the reuse and resale of printer cartridges don’t count as infringement on the original manufacturers. The court ruled that once a product is sold and exhausted, the manufacturer no longer has patent rights over it.
The exhaustion principle creates multiple business opportunities for thirdparties, wherein they can recycle and resell printer ink cartridges. Such business models are potentially lucrative since ink cartridges tend to be expensive when bought from original manufacturers.
Printer brands can still find a way around the new law. Some common practices are designing cartridges for single-use and using electronic chips to prevent reuse.
Conclusion
These disputes show how trademarks and brand distinction contribute to business success or failure. Trademarks strengthen your distinctiveness, which helps set you apart from your competitors.
Ultimately, owning a trademark can give you a command of the market, inspiring instant recognition from consumers whenever they see words or symbols associated with your brand.
Secure a Trademark with Pinnacle TMS
If you haven’t yet, register your trademarks now. This will give you exclusive rights to your intellectual properties, preventing other businesses from using them.
Pinnacle TMS helps with all trademark-related matters, including registration and management. Contact us today to schedule a complimentary consultation.
