If you’ve been following along on our blog for a while now, you’ll be aware of how serious trademark infringement is and how to protect yourself against infringers.
But how often do these cases become ‘bigger than Ben-Hur’? Do the big corporations with more access to funds for legal action always win? Are all infringement cases cut and dried or do they require a significant assessment to determine the winner?
Let’s take a look at some famous trademark infringement cases and their outcomes to learn more.
Perhaps one of the most recent famous trademark infringement cases in Australia is the dispute between American Sheepskin Company Deckers Outdoor Corporation and family-owned Australian business Luda Production.
Aussies love their ugg boots and Luda Production has been making and selling these beloved winter sheepskin boots for decades under this name. So much so that until this case, many Aussies believed UGG was local slang term for these boots.
Unfortunately, Luda Production never trademarked this name. Deckers Outdoor Corporation did. Capitalising on the growing global popularity of these boots, Deckers secured the exclusive rights to use the term ‘UGG Boots’ and have actively pursued companies such as Luda’s to stop them from selling goods under this name.
Despite Luda being able to prove that they had manufactured and sold sheepskin boots under this name for decades before Decker’s trademark, Luda lost the case and was ordered to pay US$450,000 in damages to Deckers Outdoor Corporation.
Famous American burger chain In-N-Out instigated legal action against a small, Australian burger chain named In & Out Aussie Burgers. They not only utilised a near identical name but also adopted a similar arrow logo.
In-N-Out is suing over confusing and deceptive conduct, asserting that the owner of In & Out Aussie Burgers is trying to capitalise on their success. This is not the first time In-N-Out has pursued infringers, previously winning a case against Melbourne-owned Down-N-Out burgers.
In the latter case, Federal Court Justice Anna Katzmann surmised that the Australian operators "sailed too close to the wind" and that this case highlighted "the line between inspiration and appropriation".
Despite having no local presence in Australia, In-N-Out has been able to successfully defend its rights to its trademark and will no doubt continue to address trademark infringement cases in Australia.
In an unusual case, Louis Vuitton, famous for its designer apparel, sued a South Korean fried chicken restaurant for infringement and won! The perfect example of how infringement can be stopped, even when crossing into different categories, the court ruled the takeaway shop’s name Louis Vuiton Dak was too similar to the trademarked name Louis Vuitton.
In addition to the name similarity issue, the logo and packaging utilised by Louis Vuiton Dak were also deemed as being too similar to the designer brand’s iconic trademark.
In an act of defiance or plain stupidity, the restaurant simply changed its name to LOUISVUI TONDAK following the first ruling, leading the court to take further action. For non-compliance, they were ordered to pay a penalty of USD 14.5 million.
A fight between two industry giants, the dispute between music business Apple Corps (owned by the Beatles) and tech corporation Apple Inc. has raged for years - starting way back in 1978. While an initial accusation of infringement by Apple Corps against Apple Inc, was settled through compensation and an agreement to stay out of the music business, peace was not to last.
With the launch of iTunes, Apple Corps again went after Apple Inc. stating that the original agreement was now in breach. To resolve this, Apple Inc. agreed to purchase Apple Corps trademark rights. Millions of dollars in penalties and court fees have changed hands in the 40-plus years since this trademark dispute began, however, since 2007 things appeared to have settled between the two companies.
Domain retailer GoDaddy was pursued over perceived infringing behaviour in 2010 by the Academy of Motion Picture. The Academy asserted that by allowing customers to purchase domain names such as 2011Oscars.com they were creating confusion around the Academy's existing trademarks and profiting from the results.
The Academy’s legal team presented 57 examples of domains they felt could create confusion regarding their trademark and branding. However, the judge, in this case, disagreed stating that GoDaddy does not exert control over what domains are purchased and that an ill intent to profit from these actions was not able to be proved.
Lasting over five years, this trademark infringement case represented a significant financial burden for both parties leaving no real winners.
While many trademark requests are declined due to being too generic, it may surprise you to learn that ‘superhero’ passed the mark. Jointly trademarked by competing superhero franchises DC Comics and Marvel, the use of the word superhero, or any of its derivatives could see you facing legal action.
With an extensive history of pursuing infringers, the two companies have successfully defended their rights for over fifty years. However, increasingly as the word has become popularised some trademarks now include the word ‘superhero’ and remain unchallenged by DC and Marvel.
There is speculation that should Warner and Disney aggressively pursue exclusive use, their rights to retain ownership may be reconsidered. This could account for their turning a blind eye to its use in some settings.
How did they both end up with the trademark? 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. Many indie publishers and comic book fanatics disagree with their ownership of this trademark and feel it allows them to engage in bullying behaviour towards those less equipped to fight back.
While not an infringement pursuit per se, the challenge by Kylie Minogue against former billionaire Kylie Jenner for the trademarking of the name Kylie is also quite well known. In 2014, Kylie Jenner attempted to trademark the name Kylie in the United States but was blocked by Australian icon Kylie Minogue.
Kylie Minogue asserted that trademarking the name could lead to confusion as she has been selling perfume, clothes and other products marketed under the name Kylie since 1996 (before Kylie Jenner was born). As Jenner intended to sell her own brand of cosmetics and perfumes under the name Kylie, the U.S patent and trademark office rejected her application.
While the two eventually came to an agreement in 2017, it was not without significant legal involvement and high costs. However, without Jenner going through the appropriate channels to determine ownership and instead infringing on Minogue's rights, the costs could have been much higher.
This is the perfect example of how performing proper checks before using or registering a trademark can save you time, money and stress in the future.
As the above examples demonstrate, sometimes infringing behaviour is easy to spot, yet just as equally, using a word as innocuous as ‘superhero’ could see you in hot water.
At IP Guardian, we can help you avoid trademark infringement cases. Whether you are being infringed upon or accused of infringing, we can help. As highly skilled and qualified patent and trademark attorneys, we understand the nuances of Intellectual Property law and how to navigate trademark disputes.
From performing proper checks and registering your trademark to defending your ownership rights, we can do it all. To learn more, speak with our specialist team today at 02 9071 0130.
Registered Patent and Trade Mark Attorney with significant experience obtaining all forms of registered intellectual property. I hold a Bachelor of Science in Engineering, a Masters of Business Administration and a Masters of Intellectual Property. I’m passionate about showing my clients how they can protect their brands through trademark registrations.
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