THE BATTLE OF TRADEMARK CONTINUES FOR SOLID IDENTITY

THE BATTLE OF TRADEMARK CONTINUES FOR SOLID IDENTITY

August 29, 2019

Trademark – a name, set of words, design logo or any combination of words & logo, that allows its holder to restrain others from using the mark without the owner’s permission. Trademarks help identify and distinguish a particular source of goods or services from those of other companies. Trademarks should be distinctive and not conflict with any other prior Trademarks. But in today’s competitive world, be it a small entity, a startup or a big entity, all have started to aggressively guard their IP rights, particularly trademarks. This is happening because of the uproar against an increase in counterfeiting, misuse of trademarks on several platforms and the constantly changing face of issues related to trademark contravention.

If two companies adopt similar marks that can create a likelihood of confusion as to the source of goods and services, the company that is the first to use the mark in commerce (i.e., providing goods or services under the mark) will be the senior user and have all the superior rights.

At present, companies are considering the fight for identity much seriously as that of their market share. Multinational giants to homegrown operators seem to be quite concerned about defending their intellectual property. While there are some who are trying to expand their trademarks in this highly competitive market, others are trying to stop newcomers to use any trademark that may affect their business identity. We will take a look into the recent happenings in the trademark battle that has changed the overall game of brand sustainability.

Adidas

Recently it’s been reported that Adidas has been unsuccessful in an attempt to expand its trademark three-stripe design in the EU. A general court of EU ruled that the trademark was not “distinctive” enough and Adidas was not able to prove that the mark has acquired distinctive character throughout the territory of the EU, following the use which had been made of it.

The battle is a part of a long-running dispute between the German sportswear manufacturer Adidas and the Belgian company Shoe Branding Europe.

A little bit of traveling back to the past is necessary in this regard. The three-stripe logo was first registered by Adidas’s founder, Adi Dassler, on a football boot.

However, it’s been said by the court that it was not sufficient enough to identify the products as originating from the brand.

In 2014, Adidas was granted a trademark on three parallel equidistant stripes of identical width, which the company could apply on the product in any direction on clothing, hats, and shoes.

However, in 2016, Shoe Branding Europe applied to the EU intellectual property office for the trademark to be negated. Regarding the ruling, a trademark lawyer from the European intellectual property firm Withers & Rogers told that Adidas failed to provide sufficient evidence about the fact that consumers immediately can associate the products with Adidas having three stripes on clothing, footwear or headgear.

This is not the first time Adidas has failed to protect the three-stripe motif. In 2003, it lost a dispute with the Dutch company Fitnessworld, which was using a two-striped design.

Cadbury

Confectionary giant Cadbury has been using the purple packaging for its “Dairy Milk” chocolate since 1995. Cadbury has official rights in the iconic purple hue for the shade Pantone 2685C. However, there has been a long hauling “chocolate battle” with their top rival Nestle over the purple trademark rights. Nestle opposed the trademark saying that the purple shade, having no atypical character, created ambiguity. In April 2019, The UK Intellectual Property Office (IPO) rendered a decision favoring Nestle by rejecting two of Cadbury UK Limited’s recent trademark applications corresponding to the purple shade as applied to its chocolate products. It was even claimed that the description “the color purple (Pantone 2685C) shown on the form of application” didn’t clarify how the color is used as a sign in all respects.

Caterpillar Inc.

Construction giant Caterpillar Inc. is in a trademark battle and trying to stop a tiny coffee shop in California, called Cat & Cloud, from using its name on certain items; because the coffee shop brand is way too similar to Caterpillar’s CAT trademark.

The coffee shop had apparently filed a trademark to use its name on merchandise. Caterpillar, which currently has a market capitalization of $71.47 billion, does not want that to happen and has used its extremely deep-pocketed legal resources to stop the central California coffee bros, who reportedly made $150,000 in income last year.

In response, Cat & Cloud has launched a GoFundMe, an American for-profit crowdfunding platform, to raise $50,000 to help support its legal defense.

McDonald’s

Earlier this year, McDonald’s lost its trademark battle over the Big Mac in Europe. The European Union Intellectual Property Office decided in favor of the Irish restaurant chain Supermac’s and restricted McDonald’s trademark on its Big Mac burger in the EU. It was stated that McDonald’s was not using the trademark in accordance with the EU law.

Supermac’s brought the case before the regulatory body two years ago, accusing McDonald’s of “trademark bullying.”

A protected trademark is an integral part of the business strategy that leads to better business deals. It helps to reach out to anyone from customers to business partners to investors and plays a great role in raising the value of a company. Protecting an intellectual property like a trademark can also enable companies to safely access different markets through licensing, franchising, entering joint ventures or other contractual arrangements, including overseas manufacturing, marketing, and distribution with other companies. Major companies regularly go to court in efforts to protect their trademarks. This highlights the challenge for well-known brands trying to gain protection. However, these efforts can sometimes backfire. And when this happens, litigation is the only option.

By Fariha Binte Anwar

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