A robust trademark acts as a representation of reliability, excellence, and substantial worth for a brand. Remaining watchful against possible trademark violations is crucial for any company aiming for sustained prosperity and expansion. Explore the profound influence that a robustly safeguarded trademark can have on the triumph of your business, both domestically and globally.

Lessons Learned from the Top 5 Cases of Trademark Infringement

1. Apple Inc. vs. Apple Corps: The Conflict of the Apples

In a well-known trademark dispute, Apple Inc., recognized for its iPhones and Mac computers, found itself in a legal battle with Apple Corps, a music company representing The Beatles. The conflict originated in 1978 when Apple Corps took legal action against Apple Inc. (then Apple Computer) for trademark infringement. This led to a resolution in 1981, where Apple Computer agreed not to engage in the music sector. Nevertheless, when Apple Inc. expanded into the music market with iTunes in 2003, Apple Corps initiated another lawsuit against them. The courts eventually sided with Apple Inc. in 2006, determining that there was no potential confusion between the two trademarks.

Key Takeaway: It is crucial to establish clear boundaries between different industries when creating trademarks to prevent possible conflicts and misunderstandings.

2. Starbucks vs. Sambucks Coffee: Buck off

In 2001, Starbucks filed a lawsuit against Sam Penix's modest Oregon coffee shop Sambucks for alleged infringement. Starbucks contended that Sambucks' name and logo bore striking similarities. Penix defended that "Sambucks" was simply a blend of her name and the term "bucks," commonly associated with coffee. Additionally, her cheerful sun logo was distinct from Starbucks' siren logo. Penix garnered support from the local community in response to the legal action. The dispute was resolved in 2003, with Penix opting to rebrand her shop with a new name and logo. Notably, she was not required to pay any damages. This case highlights the impact of trademarks on small enterprises and underscores the importance of conducting thorough searches prior to branding.

Key Takeaway: “We’re standing up for small business because corporate America is squeezing out the small businesses,” Buck said. “It’s real and it’s going to happen if we don’t do something.”

3. Adidas vs. Payless Shoes: Three Stripes and Your Out

Adidas, the renowned athletic apparel company, gained recognition for its distinctive three-stripe logo. In 2001, Adidas took legal action against Payless Shoes for selling shoes adorned with two and four stripes, alleging trademark infringement. Following an extended period of legal proceedings, Adidas emerged victorious in 2008, obtaining a substantial settlement of $305 million. This landmark outcome stands as one of the most substantial rewards ever granted in a trademark infringement lawsuit. Key Takeaway: It is crucial to vigorously safeguard your brand's trademarks, as even slight modifications or imitations can tarnish your brand's reputation and diminish the value of your intellectual property.

Key Takeaway: The significant decrease in the profits calculation and punitive damages award by the court is remarkable for its critique of the plaintiff's accounting approach towards the defendant's profits, as well as its determination that punitive damages should be substantially lowered in cases where the harm is purely economic.

4. Louis Vuitton v. Louis Vuiton Dak: Louis You, Louis Me

In a rather astonishing case of international trademark infringement, a South Korean fried chicken establishment recently faced a trademark dispute against renowned designer Louis Vuitton. The court ultimately sided with the designer, as they found the restaurant's name, Louis Vuiton Dak, to be excessively similar to Louis Vuitton. Furthermore, the restaurant's logo and packaging bore a striking resemblance to the designer's iconic imagery. As a consequence, the restaurant was slapped with an additional fine of 14.5 million won for failing to comply with the court's ruling. In an attempt to rectify the situation, the establishment promptly changed its name to LOUISVUI TONDAK.

Key Takeaway: It is worth noting that numerous brands can avoid costly legal battles by refraining from closely imitating another brand, even if their products and distribution channels are entirely unrelated.

5. Academy Awards v. GoDaddy: Go Away

The Academy Awards took legal action against GoDaddy for allowing customers to purchase domains such as betacademyawards.com, 2011Oscars.com, academywardbuzz.com, academywards.net, oscarsredcarpet.com, and others. GoDaddy has been accused of enabling customers to park these websites and generate revenue through pay-per-click advertising. During the initial stages of the case, the Academy Awards presented evidence that 57 out of 293 registered domains were misleadingly similar to their trademarks. However, the judge ruled in favor of GoDaddy, stating that there was no malicious intent to profit. Furthermore, the judge emphasized that GoDaddy relied on its users' representations and that their domain registrations did not infringe upon any trademarks. This case was significant in the realm of cybersquatting as the legal battle between the Academy Awards and GoDaddy spanned five years and incurred substantial costs.

Key Takeaway: Although the legal dispute was undeniably costly, it could be regarded as a significant precedent in the realm of cybersquatting. By taking a cue from GoDaddy's situation, one can prevent similar vexing lawsuits by acknowledging that it is unreasonable to anticipate a third party to vigilantly protect your brand trademark.

Published by: www.lawyer-monthly.com - 18th June, 2024

Founded in 1923, Novo Nordisk A/S is a Danish multinational pharmaceutical company headquartered in Bagsværd with production facilities in nine countries and affiliates or offices in five countries and provides medical needs of people living with a serious chronic disease into innovative medicines and delivery systems.

Steve Benz is the Corporate Vice President Legal and General Counsel since August 2022.

Published by: www.lawyer-monthly.com

Since Venezuela withdrew from the Andean Community in 2006, intellectual property rights are regulated by the Industrial Property Law of 1955 (implemented in 1956), which provides protection for trademarks, patents and commercial names and the Copyright Law of 1993, which covers the protection of original works or authorship. In 2020, following a fifteen-year hiatus in patent grants, the Venezuelan Autonomous Service of Intellectual Property (SAPI) formally recognized and subsequently began applying the Agreement on Trade-Related Aspects in Intellectual Property Rights (TRIPS), alongside the Industrial Property Law of 1955. In the event of conflicting provisions, the most favorable to patent applicants prevails.  

What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances? 

Trademarks, including trademark renewals, have a life span of 15 years from the date of registration or the date of renewal, as applicable, and may be renewed indefinitely. Renewal requests may be filed six months prior the trademark expiration date. Prior to Venezuela’s withdrawal from the Andean Community, the duration of trademarks and trademark renewals was for a period of 10 years.  

Under current Venezuelan law, patents of invention have a 20-year life span, whereas industrial design patents have a 10-year life span, each as of the date of the grant of the application. Patents granted prior to October 1, 2020, have shorter durations and cover terms beginning as of the date of filing of the patent application.  In order to maintain the validity of patents, annuities must be paid in advance of the anniversary of the grant of the application. Venezuelan law does not contemplate patent renewals.  

Copyright protection extends from the date of creation to 60 years after the death of the author, pursuant to the Copyright Law of 1993.  

Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration? 

Any inventor or owner, including assignees or entities owning the rights to an invention, are eligible to apply for a patent. The filing requirements for patents, including design patents requires the submission of the (i) name, domicile and citizenship of the inventor/ designer and representing party, where applicable, (ii) original, apostilled declaration of inventorship (with assignment, where applicable), (iii) specifications, claims and drawings, if applicable, of the invention, including drawings showing different views of the design, and (iv) any applicable priority information, including jurisdiction, registration number and date.  

If priority is claimed, the applicant must provide a certified hard copy of the priority application filed in a foreign jurisdiction, or alternatively, a digital copy of such priority application signed by the applicable foreign patent office, within three months of the patent application date. Priority applications must be filed in Spanish. Any translation of such documents must be executed by a locally certified translator. Such applications must be accompanied by an original, notarized and apostilled power of attorney in the name of the applicant.  

Trademark and commercial name applications require the applicant to file their name, domicile and citizenship. Applications must be accompanied by an original, notarized and apostilled power of attorney in the name of the applicant. If the trademark is a logo or a logo composite mark, applicants must submit such image in a .jpg format, subject to other size specifications.  

If priority is claimed, the applicant must provide a certified hard copy of the priority application filed in a foreign jurisdiction, or alternatively, a digital copy of such priority application signed by the applicable foreign patent office. Priority trademark and commercial name applications do not need to be apostilled. Any translation of such documents into Spanish must be executed by a locally certified translator.  

Copyright applications require the applicants to submit the following to the Venezuelan PTO: (i) the author’s name, citizenship and address, (ii) the applicant’s name, citizenship and address (if different from the author), and (iii) a hard copy and digital copy of the material.     

What criteria does my invention have to meet to obtain a patent? 

Inventions must be novel, involve an inventive step and have industrial applicability. Neither the Industrial Property Law nor TRIPS provide a grace period in the Venezuelan PTO’s assessment of the novelty of an invention.  Accordingly, to avoid the risk of failure to satisfy the novelty requirement, the patent applicant must ensure that they have not, prior to the filing date, disclosed the subject matter of their invention.    

Can I obtain a patent for any product or process? 

Applicants may obtain a patent for any well-defined and useful product, excluding drugs, medicines or pharmaceutical compositions, including instances where a new use for a previously patented product is discovered. Substances or elements, or combinations thereof, in the public domain are also excluded from patent coverage, unless such combinations are proven unable to function separately without impairing their functionality. Processes, including processes used to obtain pharmaceutical compositions, are likewise patentable under Venezuelan law.  

How long do patents last in Venezuela and do they expire? 

Patents of inventions granted after October 1, 2020, last for a term of 20 years, whereas industrial design patents have a life span of 10 years, as of the date of the grant of the application. Patents of inventions and industrial design patents granted prior to October 1, 2020, have a life span of 10 years from the application filing date. Venezuelan patent law does not currently provide for patent term extensions. Consequently, patents expire at the end of their terms.  

Does Venezuela consider ‘statement of inventorships’? 

Yes; patent applications (including patents of invention and design patents) require filing original, apostilled declarations of inventorship, which must be signed by each inventor or patent owner. In situations where the patent applicant is different from the inventor, the applicant must submit proof of assignment along with the declaration of inventorship.   

Can I license my patent in Venezuela or internationally and what are the requirements to do this? 

Patent owners may license their patents Venezuela upon the licensor’s registration in the Venezuelan PTO. Such registration enables patent holders to enforce their rights against third parties domestically, but this does not extend to other jurisdictions.  

Dana Bentata 
Bentata Abogados  
Av. Orinoco con calle Mucuchies 
Torre Nordic, PH 
Las Mercedes, Caracas - Venezuela 
Tel: +58 212 6007400 
Fax: +58 212 6007401 
Email: dbentata@bentata.com 
www.bentata.com 

Published by: www.lawyer-monthly.com - June 4th, 2024