McDonald’s recently lost an EU trademark fight which for now, ends a long-running legal dispute between Irish chain Supermac's and global fast food giant McDonald's. Supermac's, a small Irish takeaway chain, emerged victorious in a legal battle against McDonald's regarding the Big Mac trademark. This success now allows Supermac's to expand its presence by opening outlets throughout Europe. The ruling also means McDonald's has lost the right to use the name “Big Mac” in the EU in relation to chicken burgers.
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
