Trademark Battles through the ages

Since the introduction of trademarks into the world of commerce companies have been waging trademark wars. Some of these disputes are settled relatively quickly whilst others have been known to last for decades. Some are between corporate giants whilst others involve smaller businesses. In any case there are lessons to be learned from each of them.

1)     Budweiser and Budweiser

This is a case that has kept trademark lawyers and trademark aficionados enthralled for decades. In the late 19th Century, two beer producers, one from Missouri in the US, the other from Budejovice in the Czech Republic both decided to use the German name of the aforementioned Czech city, “Budweiser”, as their brand name. However, it was only when the American company, AB InBev, decided to trademark the name in 1907 that the dispute between the two breweries began. Since then, AB InBev and Budvar have been engaging courthouses around the world in their dispute over who has rights to the Budweiser name in each country. For example, in Germany, Budvar has the rights to the Budweiser name, whereas in the US, the court ruled in favour of AB InBev meaning that Budvar’s beer is sold under the brand Czechvar. In any case, neither company seems to want to admit defeat and so the battle for supremacy continues.

2) Victor’s Secret and Victoria’s Secret

When Victor and Cathy Moseley decided to start up their adult and lingerie store they had no idea how their small, local business could lead to such a complicated trademark infringement case. As expected,  the couple were charged with trademark infringement and sued by Victoria’s Secret but the case did not stop there. They were initially told to change their company’s name but upon being taken to Supreme Court, that decision was reversed on the grounds that the accusing company could not actually prove that their association with the smaller business was having a negative effect on their brand. However, this decision was again overruled when the Trademark Dilution Revision Act came into force in 2006. Although the determined couple lost the battle for their first choice of name, their business is still thriving under their new name “Cathy’s Little Secret”.

3) The Hobbit and The Hungry Hobbit

A popular cafe in Tolkien’s home region of Birmingham, (The Hungry Hobbit) and a local pub in Southampton, (The Hobbit) were almost forced to give up their names by the Saul Zaentz Company (SZC) who own "exclusive worldwide rights to motion picture, merchandising, stage and other rights in certain literary works of JRR Tolkien including The Lord of Rings and The Hobbit." Even New Line Cinema had to license the name from SZC in order to make both the Lord of the Rings and The Hobbit films. However, Stephen Fry stepped in to support the campaign to keep the names and they remain unchanged to this day. Stephen Fry described SZCs actions as "self-defeating bullying" but SZC defended themselves by saying that “trademark law dictated it had to act against infringements of its brands”.

4) Starbucks

Starbucks is such a renowned and popular coffee shop chain that knock-offs are constantly appearing all over the place. China is a particularly big offender. The Xingbake case received quite a lot of press at the time in 2006. The Chinese coffee shop had been using both a name and a logo that were remarkably similar to the US company’s trademarks. The Chinese name “Xingbake” actually translates as “Starbake” and so it was not really surprising that Starbucks wanted to press charges against them. The Chinese company had to pay $62,000 dollars to the American company and had to change the name of the 38 outlets that it owns in China’s capital. There have also been cases of infringement in the US. However, one such case, “Black Bear Mr. Charbucks Blend Coffee”, did not result in a win for the Coffee giant as the court ruled that the marks were not similar enough for there to be a case of infringement. Even for corporate giants the phrase “you win some, you lose some” is a fact of life.

The key lessons that we can all learn from these cases are that businesses should plan their Trademark portfolios based on long term business projects rather than their current activity in order to avoid future conflicts. Moreover, trademark infringement only occurs when a brand with a similar name and similar goods or services is trading in your territory. If the brand only has a similar name or logo but produces different goods or services then they are not infringing on your trademark rights. Be sure to do your research and to complete a comprehensive search into your chosen marketplace before launching your brand to ensure that the brand you choose will not infringe upon another company’s existing brand.

For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website, http://www.lipex.com.

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