Breaking Bud is knee deep in “Breaking Bad” trade mark infringement

Earlier this month, Sony sued Knee Deep Brewing arguing that the brewer intentionally imitated the “Breaking Bad” logo and other design elements in order to benefit unfairly from the popular AMC series.

Sony claimed trade mark infringement, dilution, false designation of origin and unfair competition, among other claims, and is now seeking damages and an injunction to stop the brewer from using “Breaking Bud” and the current logo and design.

The full complaint filed by Sony can be found here.

In a response to the complaint, Knee Deep Brewing CEO Jerry Moore referred to previous contact with Sony from three years ago and stated that there was never any indication that Sony had a problem with his beer at that time. He also stated that his customers realised that the beer label was a joke and was not affiliated with the TV show.

Briffa comment

There are a number of points to be taken away from the “Breaking Bud” saga –

First, the importance of investigating and securing the IP in your product pre-launch cannot be overstated. Knee Deep Brewing will have spent a substantial amount of money designing and marketing their product and may now potentially lose all of that investment, as well as the value of the reputation and goodwill that it has generated in the Breaking Bud products and brand over the last three years. It would have been advisable to obtain legal permission from Sony to use the a brand name and logo which was a potential infringement of the “Breaking Bad” trade mark registrations and/or to seek registered trade mark protection for the “Breaking Bud” brand pre-launch.

Second, non-similar goods and services can still amount to trade mark infringement. It is sometimes assumed by new businesses that, if an existing business is operating in a completely different space, there is no problem using a similar name or logo because there would be no competition and therefore no likelihood of confusion between the businesses. Right? Wrong. It is possible to infringe a registered trade mark even where the goods and services are completely different and there is no likelihood that customers would be confused. If the existing business can demonstrate that the new business is using a trade mark that is similar to their existing trade mark, and if they can demonstrate that the new business is gaining an unfair advantage from, or causing detriment to the reputation of, their existing trade mark, the may still have a good claim for trade mark infringement.

Finally, even where use of a word, mark or sign is obviously a joke (i.e. intentionally poking fun at an existing well-known brand), that can still give rise to trade mark infringement and other claims. Under UK copyright law, there are defences to copyright infringement which allow (in certain circumstances) for a copyright work to be used without the copyright owner’s consent (e.g. where someone reproduces part of an artistic work for the purposes of parody, caricature or pastiche). However, under UK trade mark law, the same defences do not apply to trade mark infringement and, accordingly, where a mark or sign that is similar to an existing well-known trade mark is used as a joke, that use may still amount to trade mark infringement on the basis that the reputation of existing well-known trade mark is diluted, blurred or tarnished. In addition, such use may also give rise to other claims such as passing off or unfair competition.

Briffa lawyers specialise in intellectual property, information technology and data protection law and regularly advise clients on contentious matters such as trade mark, copyright and design right disputes, as well as non-contentious matters such as intellectual property licensing. If you would like to book a complimentary 30-minute meeting to discuss your IP issues, please feel free to contact us on 020 7096 2779 or info@briffa.com.