Trade marks protect your brand and help customers locate your goods/services in the marketplace. But what happens when someone else uses your trade mark, or a name similar to yours?
Let’s look at a few trade mark infringement showdowns to see what we can learn:
1. Ugg-ly Boots Brawl
One of the more recent trade mark infringement tiffs Down Under starred American titan Deckers Outdoor Corporation and Australian underdog, Luda Production. The battle? Ugg boots!
Luda had been crafting these beloved sheepskin delights for decades, but alas, didn’t trade mark the name ‘UGG’. Capitalising on the global popularity of these boots, Deckers swooped in and snagged the rights and then actively pursued companies such as Luda’s to stop them from selling goods under this name.
Despite Luda’s history with the term, they got the boot and had to cough up $450,000 in damages.
2. Burger Brouhaha
In-N-Out, the mighty American burger chain, sued an Australian burger business, In & Out Aussie Burgers.
A similar name and logo had In-N-Out US crying foul, alleging deception and a free ride on their success. This wasn’t In-N-Out US’s first rodeo, previously winning a case against Melbourne-owned Down-N-Out burgers.
The line between inspiration and imitation blurred, as the Federal Court weighed in. Despite having no local presence in Australia, In-N-Out US was successful once again.
3. Fried Chicken Fiasco
Louis Vuitton, famous for high fashion, took on an unexpected adversary: a South Korean fried chicken joint called Louis Vuiton Dak.
The court ruled against the fried chicken takeaway shop, declaring the name and logo too close for comfort.
In an act of defiance or some might say, plain stupidity, the restaurant then changed its name to LOUISVUI TONDAK. The Court wasn’t impressed and gave them a $US14.5 million slap on the wrist!
4. Apple Duel
Behold the colossal clash of Apples. The dispute between music business Apple Corps (owned by the Beatles) and tech giant, Apple Inc, has raged for years, starting back in 1978.
The original fight between the two was settled out of court, and an agreement was entered into whereby Apple Inc agreed to ‘Let it Be’ and stay out of the music business. Well, the peace didn’t last long! With the launch of iTunes some years later, Apple Corps sued Apple Inc. again, saying they breached the original agreement. To resolve this, Apple Inc. agreed to purchase Apple Corps trade mark rights.
Millions of dollars have changed hands in the 40-plus years since this trade mark dispute began, but things have been quiet for while. We’ll see if that continues.
5. Superhero Showdown
Who knew ‘superhero’ could spark such drama? While many trademark requests are declined due to them being too generic, it may surprise you to learn that ‘superhero’ is owned jointly by DC Comics and Marvel.
How did they both end up with the trade mark? Apparently, realising the costs involved with battling each other and the risk that neither party would end up with ownership, they agreed to own it together instead and agree that each could register it.
Anti-competitive you might ask? We would never say that!
6. Katy v Katie
You may have read our recent article about the fight between Katie Perry (Australian designer) and Katy Perry (US singer).
The case didn’t end well for Ms Katy, and she was found to have infringed the Australian designer’s trade mark rights when she advertised and sold tour merch / clothing for a number of Australian concerts.
7. Kylie vs. Kylie
This is another one of those name fights. In a twist of pop culture, Kylie Minogue and Kylie Jenner faced off.
Jenner tried to trade mark ‘Kylie’ in her quest for world domination, but Minogue intervened. The dispute hinged on ownership and potential confusion, with Minogue’s long-standing brand clashing with Jenner’s cosmetic aspirations. The reportedly richest Kardashian reached a confidential settlement with Ms Minogue that allowed Kylie cosmetics to trade.
Lodestar Legal are trade mark experts. We advise on registering your trade mark, and help protect your valuable brands. Call us to discuss protecting your trade mark.