Recently Dorisimo Ltd, a company established by members of The Clash, filed a lawsuit in Los Angeles Superior Court against Wilson Sporting Goods. It accused Wilson of infringing its trade mark by introducing a line of tennis rackets called “Clash”.
Dorisimo claims that the rackets are “likely to cause confusion, mistake or deception” among customers who could assume that the band, known for hits like Rock the Casbah, London Calling and Should I Stay or Should I Go, had officially endorsed them.
I am sure you are wondering how anyone could make a connection between an influential punk band of the 70s/80s and a company known for making tennis rackets and volleyballs for Tom Hanks to paint and subsequently scream at. Dorisimo says that it in fact licensed a brand of tennis shoes that were made by Converse and also licensed the music of The Clash to major tennis events, including Wimbledon. Allegedly it is these ventures that will confuse consumers into thinking the rackets were endorsed by the band.
Dorisimo is seeking at least a cushty $3 million in damages and all profits Wilson has made from its Clash line of products. Not only that, but it also wants the cancellation of the sporting giant’s trade mark and the destruction of any Clash products it still has. As a cherry on top, it is also seeking an injunction to prevent Wilson from using the word ‘Clash’ on any of its products in future.
Dorisimo already owned the trade mark for “The Clash” covering goods and services including sound records, clothes and DVDs. However, in August this year it also filed an application for the trade mark to cover Class 25 of the NICE classification, which includes sporting footwear.
This case is yet another in a series of music intellectual property cases being brought in the American courts. However, this time instead of copyright infringement it is a trade mark dispute so I for one am intrigued to see how it plays out. Wilson has not yet issued a comment on the case so we will see what they have to say.
If you want to successfully file a trade mark application, oppose an existing application or resolve an infringement dispute, at Briffa our specialists are always available to help. Please do not hesitate to contact us on 020 72886003 or at firstname.lastname@example.org for a free 30 minute consultation.
Written by Alex Fewtrell, Solicitor.