May 22, 2019
A well renowned brewery in Colorado, USA Oskar Blues Brewery (“the Brewery”) are up against American Rock band Guns N’ Roses (“the Band”) in a lawsuit concerning an alleged trade mark infringement of the Band’s name.
The Brewery’s attempt to register ‘Guns ‘N Rosé’ for one of its most recent canned beers backfired when they were faced with a lawsuit from the Band’s lawyers. The Band have a registered trade mark for the name ‘Guns N’ Roses’ in the US and various countries for use with clothing, musical sound recordings, and musical performances. Not only that, but the Band have acquired around 30 years of worldwide recognition as a result of its success, so there is a huge reputation attached to the name ‘Guns N’ Roses’.
However, the Brewery’s lawyers fought against the opposition, saying that the Band’s trade mark did not cover alcoholic beverages, and this is where it gets interesting!
Trade marks protect the use of a brand for specific goods or services. The owner only has protection of the brand when trading in those specific areas. But is that enough to get away with using a name that is strikingly similar to something that is already registered and has a huge reputation, as in this case? Well, in spite of the fact that the Band don’t actually have a registered trade mark for alcoholic beverages, it may be able to rely on the fame of the Band and the trade mark, earned over years of success, to support the trade mark infringing claim.
According to US Law, a mark is considered to be “famous” under the Trademark Act of 1946 if it is “widely recognized” in the United States by the general public. So, the question is whether Guns N’ Roses are actually that famous? The Band’s lawyers insist that they are in fact that famous, and therefore entitled to wider trade mark protection.
The Brewery still refused to budge, however, but eventually gave in stating they were willing to abandon their trade mark application and stop sales, but only from March 2020! This led to the Band filing another law suit in May 2019 demanding full damages, and it will be interesting to see how this plays out if it goes all the way to court!
A few points to take away here:
First, include the kitchen sink. When applying for a trade mark, think about all the goods and services that you may wish to offer under that trade mark in the future, and aim to protect them all at the outset. Guns N’ Roses, as a global brand, would have been in a much stronger position if it simply had trade mark protection for the alcoholic beverages. In some territories it is necessary to prove that you are actually using a trade mark on a fairly regular basis (e.g. the US). But in other territories it is not necessary to prove actual use of the trade mark (e.g. in the UK and the US, although trade marks can still become vulnerable to cancellation for non-use after five continuous years of non-use). These questions are best considered with the advice of a specialist trade mark advisor at the outset when you applying for a trade mark.
Second, reputation is important. Even if you do not have a trade mark for everything under the sun, you may still be able to prevent someone who is not a direct competitor from using a trade mark that is identical or similar to yours if you can demonstrate that your trade mark has a significant reputation built up over time (which is essentially the approach that the Band and its lawyers are taking in this case). The logic is that if a trade mark is well-established and perhaps has a prestigious reputation (e.g. Mercedes), the use by a third-party of that mark is potentially damaging to the reputation or taking unfair advantage of the reputation EVEN IF the goods and services do not conflict (e.g. if the third party was selling furniture or power tools or disposable cutlery under the Mercedes brand). This is because the basis of the infringement claim is not confusion (i.e. that customer will confuse the products of one party for those of another), the basis of the infringement claim is detriment (e.g. dilution, blurring or tarnishment of a prestigious brand like Mercedes by selling random things like furniture or power tools or disposable cutlery under that brand) or unfair advantage (e.g. that a random third party is gaining unfair advantage and recognisability from the Mercedes brand despite not having invested in that brand).
Third, carry out searches and don’t get too close! Always carry out searches for identical and similar existing trade marks in advance (this is best done with the advice and assistance of a specialist trade mark advisor). Check the goods and services covered by the existing trade marks. If they are similar, proceed with caution because an opposition based on confusion is possible/likely. But even if they are not similar, investigate the reputation and fame of the existing trade marks and their owners. If the trade marks have a significant reputation, an opposition is still possible/likely even if the goods and services do not conflict.
Briffa are experts in all aspects of trade mark law and practice. If you would like to book a free consultation to discuss any trade mark or other intellectual property issues, please do not hesitate to contact us on 020 7288 6003 or firstname.lastname@example.org.
Written by Joshuanne Amachie, Paralegal
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