Trademark Tales

A series of recent trade mark infringement actions, from all corners of the globe, serve to indicate the opportunities to capitalise on brand identity and the limits of legal protection for creative work.

The US

MSCHF’s products are usually sold out immediately upon launch. Astro Boy boots, when spotted in the wild, spark conversation about favourites amongst the product range of the collective’s irreverent offerings.

MSCHF’s collaboration with Tyga in 2022 for the Wavy Baby sneaker was another instant sell out. However, not everyone smiled. Vans took issue with MSCHF’s parody of the sneaker. This week, the court sided with Vans, finding that it preferred the rights of the trade mark holder, to MSCHF’s first amendment right to comment.

A restraining order and injuction was allowed. This decision follows the judgment earlier this year, in Jack Daniels v VIP Products and serves to clarify the boundaries of the heightened First Amendment protections offered to support a defence of freedom of expression, where that expression makes use of a trade mark.

McDermott Will & Emery explains the judgment here.

The UK

In a WAG controversy that won’t seem to end, Rebekah Vardy has filed a trademark for ‘Wagatha Christie’. Wagatha refers to the dispute between WAGs Rebekah Vardy and Coleen Rooney, which culminated in a libel trial last year. Rebekah accused Coleen of sullying her reputation, when Coleen took to instagram to identify Rebekah as the source of the tabloid leaks. Rebekah lost the court battle, during which her cross-examination involved much-mocked testimony about her history of leaks to the tabloid media and curiously deleted messages.

In an effort to make some lemonade from all of this, Rebekah has filed trade marks to capitalise on the meme.

So, a question that brings IP lawyers to the world of celebrity gossip, is whether it should be Coleen, rather than Rebekah, that is the rightful claimant of this cultural phenonemon - given it was Coleen’s private sting that uncovered the source of the leak.

FieldFisher explains the background, the issues to consider in attempting to trade mark this kind of cultural reference, and the competing interests in the name.

Australia

Burger wars continue down under. In a series of recent judgments, the courts have recognised that we’re living in a world of abbreviations. We use acronyms regularly, and as a result, the similarities between acronyms are to be tolerated, to an extent, because the words used to construct them are far more varied that the results they produce.

This month, KFC’s opposition to the registration of a trade mark for HFC (Healthy Fried Chicken), filed by Grill’d was resolved in favour of Grill’d, on the basis that HFC was neither substantially identical nor deceptively similar to KFC.

This decision highlights the narrow scope of protection available for acronyms and initials used in branding.

K&L gates explains here.

It follows another recent burger war between Hungry Jacks and McDonalds, in which McDonalds took issue with Hungry Jacks, claiming that burger names were deceptively similar. At issue were: BIG MAC vs BIG JACK and MEGA MAC vs MEGA JACK. It also took issue with Hungry Jacks claim that BIG JACK burger contains 25% more Aussie beef than the BIG MAC.

In finding that the burger names were not deceptively similar, but finding that the comparative advertising practices that Hungry Jacks used were misleading (because the visual cues used in the advert showed a cooked burger, which was less than the claimed 25% bigger), the judgment sets out the relevant factors that should be considered in comparitive advertising practices.

K&L gates explains here.