Category Archives: trademark dispute

Microsoft forced to rebrand following BskyB’s trademark triumph

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RegisteredTrademark_jpgMicrosoft has renamed its cloud storage service SkyDrive to OneDrive following a trademark infringement dispute with BSkyB, as discussed previously on our Azrights blog.

The broadcaster first issued a complaint to the EU’s trademark office in June 2011, insisting Microsoft’s use of the word “sky” infringed its copyright.

Microsoft released SkyDrive, formerly known as Windows Live Folders and Windows Live SkyDrive, in 2007. The service has since acquired in excess of 250 million users.

While BskyB ceased its own cloud storage service at the end of 2011, it said Microsoft’s product was misleading for users of its continuing digital services, such as Sky Broadband and Sky Go.

Microsoft argued it was difficult to mistake its own cloud-based services with BskyB’s satellite, mobile and online services. However, a UK High Court ruling last summer held Microsoft would need to rename its product.

In arriving at the decision, the judge noted that customers experiencing problems with Microsoft’s SkyDrive had often called BskyB’s helpline, mistakenly believing it was responsible for providing the service.

Microsoft initially threatened to appeal the decision, but later backed down after the companies reached a settlement permitting the US computer giant a “reasonable period of time to allow for an orderly transition to a new brand,” as reported by Computer Weekly.

The rebrand has now taken place, but for Microsoft this case is all too reminiscent of its earlier dispute with Gernany’s Metro AG, which pushed the company to rename its Windows 8 Metro interface shortly after establishing itself as a household name.  Microsoft also risked losing the right to trademark Windows due its delay in trademarking the name.  Clearly, the company needs to make some changes to its practices.

Trademarks are important assets which add significant value to a brand. The lesson to take away from this case is the importance of checking that you can use a name before you launch a new product. It is so much easier to find a new name at that stage if your preferred one is problematic.

Then once a name has been identified as available, secure trademark registration in your main market straight away. It is not necessarily commercial at that stage to register in all other countries worldwide. However, if the product is successful, it’s important to have a strategy in place for registering in other markets over time to sustain the value of your brand identity. This is all too apparent following the recent European Trademark Office’s ruling that Pinterest doesn’t own rights to its name.

Trademark protection of pantone 2685c not wrapped up by Cadbury

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Image for Blog Post - Cadbury

Securing trademark protection for colours is notoriously difficult, as demonstrated by the recent Court of Appeal ruling in the litigation between Cadbury and Nestlé, concerning the trademark registration of pantone 2685c.

Nestlé v. Cadbury

In 1914, as a tribute to Queen Victoria, whose favourite colour was purple, Cadbury started to use the shade of purple known as pantone 2685c on its packaging, and it has done so ever since. In October 2004 Cadbury applied for trademark protection of this shade of purple for all chocolate goods. In 2008 Nestlé opposed the registration. After three years of proceedings between the parties the case went through to a hearing. Five months later, in December 2011, a final decision was made by the Hearing Officer, who concluded that the colour was capable of being registered. Nestlé subsequently appealed this decision. In May 2012, the High Court ruled in favour of Cadbury but limited the trademark protection to chocolate bars and chocolate drinks. See our previous blog post (Can You Trademark A Colour? Cadbury Secures The Rights To The Colour Purple) for further details. In its ruling of 4 October 2013 the Court of Appeal overturned the decision of the High Court.

Three Court of Appeal Judges found that the trademark lacked “specificity, clarity and precision of visual appearance”, and therefore to allow the trademark to be registered would, they said, “offend against the principle of certainty and the principle of fairness by giving a competitive edge to Cadbury and by putting Nestlé and its competitors at a disadvantage”. The reason for this decision was that the wording Cadbury had used to describe the colour was ambiguous. Cadbury described the colour in its application for trademark protection as: “the colour purple (Pantone 2685c) …. applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods“. It was the use of the word ‘predominant’ within this description that led to the Judges determining that the trademark lacked clarity, as it “opened the door to a multitude of different visual forms”. Cadbury argued that the word ‘predominant’ meant that the colour covered more than 50% of the surface area in question and Sir Timothy Lloyd did suggest that “if Cadbury had spelled this out in their registration it may have been possible to achieve certainty”.

Cadbury have indicated that they may appeal this decision. If they do appeal, the case will most likely be heard by the European Court of Justice. It will certainly be interesting to see what happens next.

It is important to remember that this decision does not mean that Cadbury cannot pursue anyone who now launches a range of chocolate bars and goods packaged within the same or similar shade of purple. They still have the right to bring a passing off claim against anyone who tries to misrepresent their goods as Cadburys.

Trademark protection for colours

To register a trademark, whether it is a word, logo, colour or shape, the applicant must show that the trademark is a sign, can be graphically represented and is capable of being distinguished from other trademarks. As this case demonstrates, it is difficult to secure trademark protection for a colour due to the requirement that the trademark must be graphically represented in a clear and unambiguous manner. Although difficult, it is not impossible to trademark a colour and many companies have managed to do so. For example, Tiffany’s have registered pantone 1837, better known as Tiffany Blue, for boxes, shopping bags and the cover of catalogues, and Heinz have secured trademark protection for the distinctive turquoise colour found on the packaging of its baked beans.

What can we learn?

It is important to ensure that when you register a trademark your application is clear, precise, durable and unambiguous. We must learn from the mistakes made by Cadbury in their application to register pantone 2685c.

Trademark law can be complex, especially if you are trying to register a colour or shape. Professional advice is essential, as trademark lawyers can help draft your application to ensure that it meets the necessary requirements, giving you a better chance of securing trademark protection. This is particularly important with UK trademark applications as the IPO appears to be taking an increasingly tough stance when determining what is and is not capable of registration.

Product Creation and Brand Protection: The Pitfalls of Duffins

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Product Creation and Brand Protection Recipes Coca Cola ImageSpurred on by the popularity of cookery programmes such as The Great British Bakeoff, bakers have reportedly been expanding their product lines to include hybrid bakery products such as ‘duffins’ (doughnut fried muffins), ‘cronuts’, (donut fried croissants) and ‘townies’ (a combination of tart and brownie).  This flurry in product creation has turned out to be unexpectedly controversial, as bakeries have attempted to stop other bakeries selling these products by using trademarks.

Any business that creates innovative products is interested in how these can be protected from being copied by competitors. Businesses in the food and drink industry often find it frustrating that recipes are not protected by copyright. Recipes can be copied, changed and circulated without legal redress for the originator. This does not mean that it is not possible to secure protection for a successful recipe.

A useful way to protect recipes is by keeping the recipe secret. Coca-Cola is an example of a thriving recipe that is protected by trade secrets. Any business that wants to use trade secrets should take legal advice early in the product development process to ensure that the appropriate confidentiality arrangements are put in place.

Another useful legal protection for recipes can be found in trademarks. If the business can develop a brand name or other elements of branding to market their food products, then trademarking a name can help protect the product the brand is used for, even products that can be easily copied. Think about food products like Bisto, who have managed to maintain a strong market share for an everyday food product using Bisto branding for over 100 years.

A UK trademark for DUFFIN has recently been registered in the name of Rich Products Limited, a bakery wholesalers who supply retailers like Starbucks. The brand name CRONUT is also trademarked. Independent SMEs manufacturing hybrid bakery goods now run the risk of trademark infringement if they use the names ‘Cronut’ or ‘Duffin’ for their own products. Disputes about trademark infringement can be time-consuming and costly for an SME.

Branding strategies of start-up businesses often focus on the protection of the business brand name. Creating an ‘umbrella’ brand, so that all the goods and services a business sells use the same brand, is often an efficient branding strategy for an SME as energy can be focused on building up goodwill in one brand name. However, it is important not to forget that products can be separately protected, and that giving particular goods or services their own distinctive brand name might create a commercial advantage. For example, Rich Products and their distributors now have a commercial advantage as only they can legitimately use the brand name ‘duffins’ for donut-muffin hybrids.

In order to benefit from trademark protection, the name chosen for a product must fit the criteria for trademark protection. In particular, it must be distinctive and not descriptive. The words ‘muffin’ and ‘donut’ are not trademarkable, because they are generic descriptive terms. The word ‘duffin’ could be seen in a similar light as it just merges the two words to describe a combination product, although combination words like this can have many variations. The word ‘duffin’ is not in widespread use yet, so the name contains an element of surprise or creativity that some might consider distinctive and therefore trademarkable. As hybrid bakery goods become more popular, this distinctiveness could wane.

When using brand names that verge on descriptiveness, early trademark registration is essential. Without registered trademark proprietors rigorously enforcing the distinctiveness of marks, the terms ‘cronut’ and ‘duffin’ might well go the same way as ‘sellotape’ and ‘hoover’, which both started out as brand names and are now generic descriptive words.  Avoiding descriptiveness in a product name should be part of a product development strategy. Descriptiveness should also be avoided if trade secret protection is sought for a recipe – keeping a secret is no use if it can be easily guessed.

The game is not over for bakery sellers. The underlying hybrid bakery products themselves are not protected; they can be freely made and traded. However, bakery businesses are going to have to carefully consider their product branding. Greggs, for example, are now marketing a product called the ‘Gregg-nut’. Bea’s of Bloomsbury are reportedly challenging the trademark registration for DUFFINS, on the basis that they have been using the name for their own products for over two years, and it will be interesting to see the outcome. Businesses seeking to exploit the popularity of certain products should always seek legal advice, both on how they can use trademarks to protect their own products, and on how their businesses may be affected by the trademark registrations of competitors.

Product manufacturers and developers often focus on brand protection for their business name, and don’t seek advice about the protection afforded to their products by intellectual property law until their products are already on the market. It is important to consider your brand strategy for your products from the beginning of the product development process and to obtain legal advice on trademark protection if your product is not eligible for patent or copyright protection.




UGG Trademark Disputes

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Trademarks are territorial, which means you register them country by country wherever you do business. Although this is can be expensive, and it may be tempting when starting out, to think it’s easy enough, in theory, to trade in other countries under a different brand, UGG is an example of what can happen when a trademark is not available to a business internationally.

TMRBoots known as UGGS are worn around the world particularly in rural locations. The term UGG for this specific type of sheepskin boot has been used in Australia since the 1950’s and now many consumers believe the boots are from Australia.

The term UGG-BOOT was registered in 1971 in Australia, but then lapsed as it was not used. Then in 1999 the American outdoor company Deckers registered the word mark UGG AUSTRALIA. Celebrities began to wear the boots and by the early 2000’s the boot became popular and sought after all over the world. As a result Deckers became more protective of the brand and began issuing legal threats against companies in Australia who were using terms similar to UGG such as UGH.

In 2006 a competitor of Deckers, UGG-N-RUGS successfully applied to remove UG, UGG and UGH Boots from the Australian Trademarks register on the grounds that the term was generic and descriptive of a specific type of sheepskin boot in Australia.

Deckers still has its trademarks in the EU and the US However, in Australia the company  aroused much controversy over the question whether the name is a brand name or a geographical indicator for a type of boot., and as mentioned Deckers lost its trademark there.  The fact that Deckers is still a registered trademark outside Australia means that competitors cannot market their boots as UGGs in the EU and USA. Instead they have to use terms like Australian Sheepskin boots to describe the boots.

Competitors are trying to change UGG into more of a regional mark like Champagne and want consumers to associate UGGs with a particular type of sheepskin boot made in Australia and not a trademark which indicates they are made by Deckers. In response, Deckers is focusing on the fact that its UGG boots are made in China and not Australia.

The fact that the UGG trademark has been revoked in Australia but is still registered in the EU and the US presents Deckers with serious challenges.

It is difficult for Deckers to tackle the companies selling UGG boots from Australia on the internet as I found out when I tried to buy a pair of UGG boots for my daughter back in 2009. As I wrote on the Azrights IP Brands blog that’s when I became aware that UGG is not a trademark in Australia and Deckers can’t stop vendors from Australia labelling their boots as UGGs within Australia. It is notoriously difficult to prevent sales online from entering the EU or American markets once to reach  consumers in these markets. This is despite the fact that many of them are likely to have bought the boots online believing them to be the genuine article, and not from some Australian boot company producing a lower quality boot.

Arguably, Deckers could do more to prevent consumers from being confused. For example, they could rebrand so as to remove the word Australia, especially given that its UGG boots are in fact made in China. It would be even better if the company were to change its brand to DECKERS UGG.

Deckers would benefit from taking swift action to prevent confusion in the market place, and to ensure the name UGGs is associated with its own quality products. The importance of educating the public about its boots so people are not duped into buying UGG boots from Australia when what they’re actually looking for are branded UGG Australia boots from Deckers can’t be overstated. What do you think? Have you had any experiences buying UGG boots? Let us know by leaving a comment below.

Protecting the Shire: Fry and McKellen step in to save the Hobbit

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Some may see it as unwarranted bullying, while others say it is to be expected.  Either way, the publicity arising from recent allegations of IP infringement have certainly thrown The Hobbit pub in Southampton firmly into the limelight.  The Saul Zaentz Company, owners of rights to the Hobbit and Lord of the Rings brands, among other JTT Tolkien work, have taken action against small business owners in the past, such as in November of last year where their lawyers argued that the Hungry Hobbit cafe took unfair advantage of the Hobbit trade mark.

While the cafe is reportedly considering a change of name, the pub, which sells Frodo and Gandalf cocktails, has received overwhelming support not only from the online commuity, but from actors involved in the upcoming Hobbit film. A Facebook campaign has rallied the support of 60,000 Facebook users (Save the Hobbit, Southampton), and actors Stephen Fry and Sir Ian McKellen have even agreed to pay licence fees on behalf of the pub to settle the dispute.

When issues like this capture the imagination of the public, the results can be surprising, I’m sure that SZC were not expecting such a backlash.  More so than any marketing or education by businesses in the field, these disputes serve to increase public awareness of IP issues crucial to businesses worldwide.  Taking advantage of the public interest, a group of Tolkien enthusiasts have now also begun a campaign against exclusive rights in the word Shire, encouraging visitors to their website to proudly showcase a Save the Shire poster.  It will be interesting to see how much momentum they are able to generate.

Hasbro Trade Mark Infringement Claim Stops Launch

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Alleged infringement of the TRANSFORMERS trade mark recently sparked a dispute between the leading computer technology company Asus and Hasbro, a multinational games business.

Hasbro is the maker of a line of toy alien robots named Transformers, able to disguise themselves as automobiles. The Transformers universe features two warring factions of these robots: the Autobots and the Decepticons. First introduced in 1984 the robots have, in the course of nearly thirty years, spawned comic books, animated TV series and a live-action movie franchise.

Filing suit for trade mark infringement, Hasbro alleges that Asus’ release of the Transformer Prime laptop takes advantage of the trade mark in order to make money, a representative stating that ‘Hasbro continues to aggressively protect its brands and products and the specific actions we are taking today against Asus underscores yet again Hasbro’s willingness to pursue companies who misappropriate our intellectual property for their own financial gain.’

So, why is a toy company concerned about a consumer electronics business using the word TRANSFORMERS?  After all, there seems to have been no quarrel between Hasbro and Boots over registration of TRANSFORMERS for cosmetics. How likely are consumers to be confused into linking Asus to the Autobots?  Tablet devices and toys do seem quite far removed from each other.  However, the combination of TRANSFORMER and PRIME does offer some support to Hasbro’s case as discussed below.

Asus has used the word TRANSFORMER when naming its products in the past, releasing the Eee Pad Transformer tablet device at the beginning of January. However, this time round the addition of the word ‘Prime’ has given rise to suspicion, as the leader of one of the robot factions is a character called ‘Optimus Prime’. Hasbro is not sure that this is just a coincidence.

Included in Hasbro’s trade mark portfolio are registrations and applications for the trade mark TRANSFORMERS PRIME in various jurisdictions.  While not yet registered in the US, Hasbro does own UK and European registrations for these words, originally filed in June 2010.  TRANSFORMERS PRIME is clearly a much closer match than just TRANSFORMERS, but is not registered against tablet devices.  It remains to be seen whether the notoriety of the TRANSFORMERS brand will tip the case in Hasbro’s favour despite differences in the goods sold under the mark.

Techweek draws a parallel between the tablet and the robots, noting that ‘the major selling point of the Asus Transformer Prime is that it converts [transforms?] into a form that closely resembles a laptop when the keyboard dock is used’, so mimicking the Transformers’ ability to disguise themselves as vehicles.  Still, the word ‘transformer’ is somewhat descriptive in this context, arguably referencing the functionality of the product rather than ripping off the robot franchise.  Dailytech further observes that ‘The Transformer Prime doesn’t convert into a truck, and the Transformer toys don’t offer the Android operating system with apps and Web-browsing capabilities.’

Asus claims that internal studies have shown ‘no issues’ with its use of the Transformer brand indicating an intention to stick with the name, but if Hasbro has its way it could be some time before the tablet reaches consumers.

Twitter goes for TWEET!

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We have written previously on this topic about Twitter’s bid to protect its trade mark and brand.  As Twitter co-founder Biz Stone said in a blog post in 2009,

“We have applied to trademark TWEET because it is clearly attached to Twitter from a brand perspective but we have no intention of “going after” the wonderful applications and services that use the word in their name when associated with Twitter. In fact, we encourage the use of the word TWEET”.

Ironically, their application was refused by the United States Patent and Trademark Office (‘USPTO’) in April 2009 and again in March 2011 due to the existence of the mark “LET YOUR AD MEET TWEETS” registered by an online advertising service provider called Twittad.

Now, Twitter has finally decided to sue the third party developer over the use of the word “TWEET” in Twittad’s trademark – “LET YOUR AD MEET TWEETS”.  The mark was applied for back in July 2008, thereby blocking Twitter’s own application to trade mark the word TWEET.  So, Twitter now wants to own the mark.  It believes it has more legitimate right to use the mark TWEET.  Its legal filing says “The defendant’s registration unfairly exploits the widespread association by the consuming public of the mark ‘TWEET’ with Twitter and threatens to block Twitter from its registration and legitimate uses of its own mark.”

Twitter contends that Twittad has used the strap line ‘LET YOUR AD MEET TWEETS’ solely as a generic phrase in advertising itself in connection with Twitter. Therefore it is not a trade mark within the meaning of trade mark law and thus, renders the mark subject to cancellation. Alternatively, they contend, even if Twittad is successful in establishing the strap line as a mark, then the mark should be cancelled due to Twitter’s pre-existing rights in the mark.

Twitter comments, “Twitter’s organic growth has taken many forms, including a widespread, dictionary-documented association of the word ‘TWEET’ with the use of Twitter. It is in the best interests of our users and developers for the meaning of ‘TWEET’ to be preserved to prevent any confusion, so we are taking action to protect its meaning.”

On the other hand, Twittad founder James Eliason said “We firmly stand by our position of the legitimacy of the trademark due to the fact that our mark was cleared by the Trademark office in 2008.”

Twitter already owns trade marks ‘COTWEET’ and ‘RETWEET’, however, in this case they were beaten by the third party developer Twittad who filed their trade mark application for the mark ‘TWEET’ earlier than them.

Twitter is not only determined to defend its brand name in the trade mark area, but also to third party app developers using Twitter site to aid their businesses. Generally, in such cases, Twitter either acquires these applications or suspends their use on its site. For example, Twitter has acquired TweetDeck, an application for organizing the display of tweets, for more than $40 million.

In the meantime, Twitter has suspended the twitter account of Twittad.


Bands and Brands: (Some of) The original cast of Bucks Fizz strike out

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Recently, Robert Gubby (aka Bobby G) succeeded both in an opposition brought against his former band members in connection with their application to register the trade mark mark THE ORIGINAL BUCKS FIZZ, and in defending an action for revocation of the mark BUCKS FIZZ, owned by his wife Heidi Manton.  The case report is available via the IPO Bucks Fizz to consist of the original lineup.  Further clarifying the Registry’s view, the Hearing Office explained:

‘Plainly, once the public became aware that most or all the original members of the group were once again performing under tha namen Bucks Fizz, the public’s expectations as to the line-up of any particular group appearing under that name was liable to change.  But the recent confusion is not the result of the use made of the mark by its owner … [who] cannot be held responsible for that because … such use was not with [their] consent’

This is not the first dispute arising in connection with ownership of an act’s name after members of the band have left.  The IPOs decision cites the SAXON case, in which Laddie J. explained that ownership of a band name vests in the band partnership, and that individual band members, though they have an interest in the name and associated goodwill, do not own the assets themselves.  Importantly, the judge found that a second band using the same name, established following the disbanding of the first, will acquire separate rights in the goodwill it generates.  The question was then whether or not the goodwill of the initial band has evaporated; whether its rights have been abandoned; or whether it has acquiesced to the second band’s activities – in that case, and as suggested in the BUCKS FIZZ case, the original band members were found to have abandoned their share in the goodwill, leaving the latest incarnation of the band with stronger rights.

Under dissimilar circumstances, the SUGABABES brand, after the last of the original band members left last year, has recently been the subject of a dispute.  Mutya Buena, one of the founding members, filed an application for the European Community Trade Mark in March 2009, on the assumption that after the last of the founding members of the band left, the Sugababes had effectively ‘ended’.  This was opposed on the basis of earlier rights owned by the latest incarnation of the band, whose Heidi Range argued: “Our record company [Universal] owns the name so there’s no conversations about who owns the name”.  The band currently includes 3 members, none of whom were involved in the original line-up, and in light of the strength of goodwill in the brand associated with the group the opposition was successful.  Buena’s application was stripped of much of its content, resulting in a narrow, arguably near-worthless registration for: Paper, cardboard and goods made from these materials, not included in other classes; stationery; paper gift wrap and paper gift wrapping ribbons.

The words of Laddie J. in SAXON are a concise warning, and of continuing relevance to bands and other businesses whose brands are liable to become valuable assets alike:

A properly advised band could avoid the problem that [a change in membership] might cause by entering into a partnership agreement which expressly provides for the partnership to continue on the departure of one or more members and which expressly confirms the rights of the continuing and expressly limits the rights of departing partners to make use of the partnership name and goodwill.

Bacardi wins ‘Havana Club’ name battle

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A couple of weeks ago, Bacardi won a dispute against Pernod Ricard over the use of the brand name ‘Havana Club’ in the US Court of Appeals. The court ruled in favour of Bacardi, allowing the company to package and market its Havana Club rum in the US. This ruling follows an ongoing battle with Pernod Ricard, who opposed Bacardi’s sale of Havana Club rum in the US, calling the name ‘misleading’. This lawsuit is one of many various allegations made against Bacardi, which have been ongoing for the past 17 years.

In 2006 Pernod launched a lawsuit against Bacardi, accusing them of false advertising. Bacardi’s Havana Club rum is made in Puerto Rico, but is based on the original Cuban recipe from the creators of the brand, the Arechabala family. Pernod claimed that the ‘Havana Club’ brand would confuse customers into thinking that Bacardi’s rum was made in Cuba.

The U.S court of appeals has reconfirmed that there is no reason to conclude that Bacardi’s Havana Club label is misleading as Bacardi has accurately portrayed the geographic origin and Cuban heritage of the Cabana club. The front of the liquor bottle clearly states ‘Puerto Rican rum’, so as to not cause any ambiguity over the geographical origin of the rum. Instead the name reflects the Cuban heritage of the recipe.

Bacardi stated, “Bacardi USA commends the Appellate Court’s decision, which reaffirms that Bacardi has accurately portrayed both the geographic origin and the Cuban heritage of our Havana Club rum. The Bacardi Havana Club rum is based on the original Cuban recipe from the creators of the brand, which was legally purchased by Bacardi and is now produced in Puerto Rico. This is yet another Court decision supporting Bacardi’s legitimate right to use the name Havana Club for Puerto Rican rum with a prominent statement of origin on the packaging.”

Pernod Ricard is determined to keep fighting against the so-called ‘misuse’ of the Havana Club trademark. The General Counsel of Pernod Ricard, Ian FitzSimons, stated ‘we are determined to continue fighting for fair competition in the U.S. market where ownership of the ‘Havana Club’ trademark dates back to 1976’.

The company had commissioned a survey showing that 20% of U.S. rum consumers had been confused by the Havana rum bottle, evidence which the judge dismissed as being unhelpful.

A complicated History!

The dispute between the two companies in fact dates back before even the start of the Cuban Revolution in 1953, and has a long and complicated history. The ‘Havana Club’ trademark originally belonged to the Arechabala family, who produced ‘Havana Club’ rum in Cuba, which was exported for sale in the U.S. The family lost their company during the Cuban Revolution as the dictatorship took over their privately owned businesses, and in 1973 they were forced to give up their trademark without compensation. After the Cuban Revolution, the U.S started a trade embargo, prohibiting the trade of Cuban goods in the U.S, and meaning rum made in Cuba cannot be legally sold in the U.S.

The trademark was then purchased by Cubaexport from the Cuban government. Later, in 1993, Pernod Ricard, a French drinks company, entered into partnership with Cubaexport, securing exclusive rights to the mark. The first lawsuit was launched in 1996 by the Cuba/Pernod joint venture claiming fraud and deception by Bacardi who had begun distributing rum from the Bahamas in the U.S. under the name ‘Havana Club’. Bacardi produced their rum working with the Arechabala family, the original trademark owners, and had purchased from them whatever remaining rights the family had to the ‘Havana Club’ trademark. Notably, Cuban trademarks have grown in importance in anticipation of an end to the 1963 embargo.

Two years after the Havana Club Holding filed its complaint against Bacardi, legislation was introduced – ‘Section 211’ – forbidding registration in the US of trademarks belonging to Cubans before they went into exile, and leading the case against Bacardi to be dropped. So far this provision has only been applied to the Havana Club mark.

Bacardi unsuccessful in Spanish courts

Although Bacardi retained the ‘Havana Club’ trademark in the U.S, they were not as successful elsewhere. In Spain in 1999, Bacardi sued Pernod, claiming to be the rightful owner of the trademark. However, the Spanish courts sided with Pernod, holding that the Arechabala family neglected the mark by failing to challenge ownership, and leading to expiration of their rights.

Facebook v. Shagbook

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Facebook has recently filed a lawsuit against Shagbook, an adult dating site. It explains that Facebook’s image would be damaged by any registration for the mark Shagbook. Shagbook is a site which allows consenting adults to make location- based searches ‘to hook up with local singles for no strings attached adult dating’.

 Shagbook is not going to take this lawsuit lying down said its founder. He claims he had been using the term ‘Shagbook’ since the year 2000 to refer to his little black book, and created his site in 2006, before Facebook became popular. Shagbook appears to be set on fighting Facebook at all costs.

 Is Facebook abusing its money power?

 Shagbook has accused Facebook of ‘trademark bullying’ and using ‘oppositions, litigation, and threats of the same to maintain a competitive market advantage’.  They state that ‘With billions of dollars in outside investment, Facebook appears to consider the court system, the United State Patent and Trademark Office and TTAB within it to be nothing more than tools it can use to fend off potential competitive threats before they actually materialize’.

 This is not the first time Facebook has gone after companies for names that are similar sounding to their own.  Last year, Teachbook suffered a lawsuit by Facebook for ‘misappropriating the distinctive BOOK portion of Facebook’s trademark’. However, the case was thrown out on a jurisdictional technicality.

 Amongst the other sites that have encountered trademark threats from Facebook, are Placebook for infringement, (which was overcome by renaming the site ‘PlacéBook’) and LameBook.  LameBook is a site parodying Facebook, so it actually decided to follow a strategy of suing Facebook first, which Facebook responded to by suing back.

 ‘Facebook’- Not distinctive enough?

 Shagbook is now planning on using Facebook’s history of trademark disputes against them, claiming that the term FACEBOOK itself is generic.  It argues that the Facebook trademark should never have been granted.

 The accusations of genericity go back to the history of the term ‘FACEBOOK’. Although currently the word ‘Facebook’ is synonymous with the Social Networking site, the term has been around before Facebook was even created. It has been used for decades to describe publications created by students, faculty and universities. Facebooks often contained pictures and limited biographical data.

 According to, the term ‘FACEBOOK’ has been used since 1983, whereas the social networking site was set up in 2004, 20 years later.

 Shagbook argues that moving these facebooks online was just a natural progression.

 Facebook’s accusation that Shagbook has violated Facebook’s trademark, is based on the reasoning that the site’s name is similar in ‘appearance, sound meaning, and commercial impression’, and accuses the site of trying to ‘trade off the fame of Facebook’.                      

 Shagbook’s response is that their site cannot be confused with Facebook’s, as Facebook has often made it clear that it is not a dating site in its marketing strategies, and has even removed individuals who have been using the site as a ‘dating site’. Shagbook believes that therefore, Facebook cannot argue that it provides services that are similar to the ones provided by Shagbook.

Some think this case might be a tough one for Facebook, with even the site’s own trademark being put into dispute.