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 here.

Dean Dunham, the solicitor representing the other three original band members, Cheryl Bake, Mike Nolan and Jay Aston, said ‘”Clearly the band is extremely disappointed in this decision and we will be immediately appealing it through the High Court to get this decision overturned. We believe the decision is not correct in law as we have clearly shown that the public are indeed misled by the use of the Bucks Fizz trademark by its owner Heidi Manton and her husband Robert Gubby and, with this being the case, the trademark should have been revoked.”

However, the Hearing Officer for the Intellectual Property Office noted that 15 people have been part of the band in the past 30 years, and that the original Bucks Fizz members have not performed together since 1985.  So, arguably the public would not previously have had reason to expect an act named 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 theRegister.co.uk, 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.

How Fragile is Reputation

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The recent closure of the News of the World is an example of how quickly brands that are unmasked on social media can lose their reputation and brand value.  Where previously a brand could use a considerable marketing budget to drown out any negative voices, now as Interbrand puts it “people take to Twitter and Facebook to dismantle all the hard work and equity a brand has built up in a matter of hours”.  

But if your brand has wrongly suffered and lost its reputation can you ever be properly compensated for a ruined reputation?

I came across this disturbing story about Elle MacPherson’s IP strategist.

Mary-Ellen Field was a successful IP Strategist until her career was abruptly ended following stories about Elle in the News of the World.  She was a victim of phone hacking and at that time did not know what we now know, so had no way to fight back.

She is currently suing News Corporation in a bid to have her name cleared.

The IP Finance article Civil Action for Phone Hacking: How Much Is It Worth has an interesting overview of the civil actions available to victims. 

Interestingly Mary-Ellen has so far refused a settlement, so it may prove to be a case that leads to a court decision.  If so, I’ll be watching with interest.

Microsoft En-Trench-ed In Trade Mark Tussle

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Trenched, a video game developed by Double Fine and produced by Microsoft, has had its European release date set back, potentially indefinitely, following a dispute over the name.

The European Community Trademark TRENCH, filed in 2009 by the board game designer Rui Alipio Monteiro, is registered against both board games and computer games. The designer also invested in registration of a number of designs, protecting aesthetic aspects of the board game.

Perhaps as a result of poor due diligence, Trenched the video game was announced in March, and released by Microsoft and Double Fine on the Xbox Live Arcade in North America on June 22, without cooperation from Monteiro who now appears set to fight Microsoft for exclusive use of the brand.

Speaking about the dispute to Eurogamer, the Portuguese company Criações a Solo explained that they intend to “defend all their author’s copyright and intellectual property against any infringements”, and stated their goal as “putting Trench in the international Hall of Fame of both classic electronic and board games”.

Double Fine’s Trenched not only shares elements of its name with Monteiro’s board game – they are both military-themed, and set in or around the time of WW1. Double Fine designer Brad Muir told Destructoid ‘This entire process has been very frustrating to us and it makes us sad that the people of Europe can’t play our game. Microsoft owns the IP for Trenched and they are working to resolve things as quickly as possible’.

Mark Methenitis at Joystiq offers some explanation of complications with the position in the US – namely that both the application for the logo shown here on the left, and Microsoft’s application for the mark TRENCHED, have so far been filed as intentions to use. This means that it might be some time before either are granted, however, should Monteiro’s application succeed, his rights will extend back to June 2010, nearly a year before Microsoft filed their own applicatio. In that case, an important question will be whether Microsoft’s use of the word mark TRENCHED could be confused with the Trench logo.

Some cite their investment in marketing as motivation for sticking to their guns, and it will be interesting to see whether Microsoft and Double Fine can come to some arrangement for coexistence with the board game designer or whether they will dispute the scope of their rights.

Alternatively, it is possible that media attention (such as this blog post) generated by the dispute might create enough buzz to offset the loss of investment in marketing should Microsoft persuade Double Fine to re-brand.

In the meantime, Microsoft’s line is:

‘We don’t have an update on the distribution of Trenched in Europe yet… We’re working to resolve the matter as soon as possible and will keep you posted’

Irrespective of the eventual outcome, this dispute is another very public example highlighting the importance of early clearance of brand names; and in particular international trade mark searching when products or services will be sold abroad.

GOOGLE PLUS – Brand Naming Strategy

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Google’s launch of its social networking site, Google Plus, has caused a lot of attention and speculation in the media.  However, it is not just the site itself that has provoked discussion, but its name too.

Google’s decision to create its social media site under the Google brand has been criticized and praised in equal measure.      

Unlike Google, Apple is a company that has launched its products and services under new names, for example, recently using a lowercase letter ‘i’ to distinguish a service as belonging to it.

Whilst this strategy has been successful in some cases, in others Apple’s use of common words such as ‘phone’ or ‘book’ in combination with ‘i’ has caused it to face lawsuits for trademark infringement as mentioned in our previous blog, Apple under fire again-this time over ibook.

Although Apple has generally managed to fight or pay its way into keeping its chosen brand names, what is for sure is that Google by using its pre-existing trademark for its other services, will be unlikely to attract costly lawsuits over trademark infringement.

Google’s brand strategy

It is not just with Google Plus that Google has used this lower cost more straightforward approach to its new names.  It has launched other products under the GOOGLE brand name such as Google News, Google Translate, and Google Chrome.

As well as this, alongside the introduction of Google Plus, two of its existing services are also getting a rebrand. The names for Google’s longstanding products Picasa and Blogger are going to be retired.  Picasa will become ‘Google Photos’ while Blogger will become ‘Google Blogs’.

Brand unification

Ben Parr of Mashable states that this ‘brand unification effort will be the largest in the company’s history’. By bringing more of Google’s products under one brand name, this will help to strengthen and solidify the Google brand. Over the past few years Google has managed to be a consistently highly rated brand, meaning that any new products will benefit from using the company’s name.

However, despite the fact that Google’s strategy of launching its social networking site under the existing brand name has some upsides, its decision has come under scrutiny, mainly because some think that the name ‘Google’ is associated with a search engine rather than a Social Network, so that when they hear the name Google, ‘social’ does not enter their heads.  Therefore,  some have criticized Google for not launching its social media site under a different brand name

Brand extension

Is it really going to strengthen Google’s brand to extend the original brand name to other areas? Or is the power of a brand in its ability to pinpoint a specific service to one name? Whereas before, the word ‘Google’ was synonymous with its search engine service, extending this meaning to cover social networking as well could weaken or strengthen the power of this brand.

Rather than trying to launch a new service, separate from its search engine one, what Google is trying to do is to make Google more ‘’people centric”. Vic Gondotra, the leader of Google’s social efforts, stated “We’re transforming Google itself into a social destination at a level and scale that we’ve never attempted — orders of magnitude more investment, in terms of people, than any previous project”. Rather than trying to provide just a social media service, Google itself wants to become more social.

So when branding products, it seems Google’s approach is one that might eliminate lawsuits over trademark infringement, and also help to strengthen the brand as a whole. As the web becomes more social, and Google is in danger of being taken over and replaced by sites such as Facebook, Google’s decision to rebrand itself as ‘social’, bringing the company name into this brand, will help it to redefine itself in accordance to the changing nature of web usage.

Genericity

One problem Google has been facing is the increasing tendency for people to use its name as a verb.  In recent times people have talked about ‘goggling’ or ‘facebooking’. While it may be flattering for a brand to gain such recognition this could be disastrous for its trade mark rights.

Take for example ASPIRIN.  It used to be a trademarked name for a pain reliever medicine made of acetylsalicylic acid which was made by only one company.  Now it is synonymous with that type of pain killer and made by many companies.

Many other once famous marks are now only generic words and no longer trademarks including CATERPILLER, HOOVER, THERMOS and WALKMAN while XEROX and KLEENEX have gone dangerously close to losing their marks.

When a mark is generic it means the trade mark is synonymous with all versions of that product.

There are steps you can take to prevent this from happening. One way to reduce risk is to use generic descriptors to clearly differentiate the trade mark and the product.  That is, Xerox copier or Kleenex tissues, and to ensure everyone else does likewise.

If a mark becomes generic it is almost impossible for the mark to be registered again. It will be deemed to lack distinctiveness and then everyone will be able to use it.

By choosing to stick with its existing brand name, for Google Plus is Google helping or hindering itself?  Will Google’s decision to use its name with brand extension descriptors put it in a better or worse position to avoid genericity?   What do you think? I hope to hear readers’ thoughts.

ELIO FIORUCCI – Owning own name?

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In our earlier blog piece Fashion Industry. Fiorucci. Use of own name we wrote about Mr Fiorucci, a fashion designer who had achieved certain renown in Italy during the 1970s.  This is an update on the progress of that case, which has made its way from OHIM, through the Board of Appeal, to the General Court and eventually landed in the European Court of Justice, which recently rendered its decision.

In 1990, due to some cash problems, he sold his company, Fiorucci SpA, to Edwin Co. Ltd, a Japanese Multinational, along with its entire creative assets including all the trademarks it owned and “all the rights exclusively to use the designation ‘FIORUCCI’”.                   

Subsequently, Edwin registered as an EU word mark the name ELIO  FIORUCCI.  However in 2003, Mr Fiorucci brought an action to invalidate this registration on the grounds of his right to the name under a national law. The Cancellation Division duly declared the ELIO FIORUCCI community trademark invalid holding that Elio Fiorucci had an earlier right under Italian laws.  These laws stipulated that well known personal names may be registered as a trade mark only by, or with the consent of that person. In this case, the ELIO FIORUCCI mark had been well known, and no such consent had been given.

That decision was then annulled by the Board of Appeal, who held that his situation did not fall within the scope of the Italian regulations, which were designed to prevent third parties from exploiting for commercial purposes the name of a person who had become well known for non-commercial activities. As Mr Fiorucci’s name was renowned as a result of commercial activity the Board found that the rule did not apply.

Fiorucci took the case to the General Court, hoping to have this decision set aside, and the registration revoked or declared invalid. The Court refused to revoke the registration on the basis that it was likely to mislead consumers. However, it did reject the Board’s view that the situation fell outside the scope of the Italian regulations, on the basis that the wording of the national law does not require renown to derive from non-entrepreneurial activity. The effect was merely to set aside the decision of the Board of Appeal, and leave standing the Cancellation Division’s declaration of invalidity.

The General Court’s interpretation of this national law has now been upheld by the European Court of Justice following appeal by Edwin. The ECJ rejected Edwin’s argument that the right to a name under the Italian law was limited to its protection as an attribute of personality, holding that the provision may be relied upon as a right to commercial exploitation of a name.

It is interesting to note that Elio’s case might have reached a different outcome if the Board of Appeal had examined Edwin’s argument that they were assigned trademark rights in the name ELIO  FIORUCCI.  As the Board did not do so, the ECJ found that the General Court was correct in not dealing with this question, as it was not within the Court’s power to substitute its own reasoning on issues where the Board of Appeal had not adopted a position.

Important points to take away from this case include:

  1. The holder of rights to a name is entitled to prevent its use as a Community trade mark where national law so permits.
  2. If there is to be an assignment of trademark rights in some elements of a personal name, like in Elio’s case (FIORUCCI), then the extent of that assignment should be made very clear, for example whether the assignment extends to the full name of that person.
  3. Provided that the essential function of a trademark is maintained (i.e. to guarantee the nature, quality or origin of goods or services), and there is no likelihood of deceiving consumers, then an individual is unlikely to succeed in securing revocation of a trademark for their personal name which was assigned earlier to another business now owning the mark.

Trade names or business names as trademarks

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Quinn & Donnelly is one of Ireland’s well-known and most successful fashion design partnerships which was founded more than 30 years ago when the pair were fashion students.

Their collections, which are generally affordable, and primarily aimed at working women, have been sold for more than 15 years by retailers including Brown Thomas and House of Fraser. Recently, they were involved in a dispute concerning their brand name Quinn & Donnelly.

Although they registered their name as a business name years ago (on the register of Business Names, which has now been abolished) they did not register it as a trademark. They only applied to register it as a trademark last year.  However, their Irish manufacturer, Sonole Designs has objected claiming rights in the mark. There is currently little information available about the basis on which Sonole is claiming rights in the trademark.  It is possible the dispute is based on the terms of the original agreement between the parties.

Quinn and Donnelly have worked with this manufacturer for the past eight years. The dispute is now before the Intellectual Property Office which may take six months or longer to resolve and until a decision is reached in the matter, no collections may be produced under the mark.

Distinction between trademarks and business names.

At this point it is worth considering the distinction between trademarks and business names briefly. A trademark is a distinctive sign or indicator used by a business to identify its products or services to consumers.  It is a sign informing consumers that goods or services originate from a particular source, so they are able to distinguish it from similar products or services in the market.

A business name is the name under which a business trades.  So, if you are a sole trader or have a registered company name you could choose to be known as something else. For many businesses the trading name will be the same as their registered company name and will also act as their trademark. It all depends on how the names are used in practice.

To be able to function as a trademark a name must meet certain criteria, such as to not simply describe the products or services of the business.  If a trade name is used as a designation of origin to inform consumers where a product or service is coming from, then it is being used as a trademark.

This seems to be the case with the fashion designers in the present dispute.

As happens all too often in practice, the designers were under the impression that their registered business name was sufficient.  They had not realized they needed to register it as a trademark.

In such cases, the best advice is to register the trademark as soon as trading begins. If Quinn & Donnelly had done so, they may have possibly avoided the current dispute with their manufacturer, assuming they  understood the importance of clarifying who owns the IP rights when entering into agreements with manufacturers.

Often when businesses have not registered trademarks they have to rely on unregistered trademark rights in the name.  An unregistered trademark must be either inherently distinctive or possess secondary meaning to receive protection under trademark law. In other words, the question turns on whether there is goodwill in the name.  Does it act, in the eyes of consumers, as a designation of origin of the goods?  The evidential burden of proof can be substantial, and it is much simpler to establish rights in a name if it is registered as a trademark.

So the moral of this story is to register a trademark at the earliest opportunity.

Apple under fire again – this time over iBook

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Apple’s ongoing trademark battles seem set to continue, with a new suit filed in connection with their iBooks service hot on the heels of a dispute with iCloud Communications (reported online last week).

This time Apple is being sued by a New York book publisher, John T Colby for trademark infringement of the name ‘iBooks’.  The lawsuit was filed less than a week after the iCloud claim.

John T Colby bought the rights to a series of books which have been published under the iBooks imprint for over a decade, and believes that Apple’s use of the term iBooks for its eBook store and reader app is clear trademark infringement.

‘Colby bought in 2006 and 2007 the assets of various entities owned by New York publisher Byron Preiss, who had published more than 1,000 hardcover and paperback books under the “ibooks” name starting in September 1999, according to the lawsuit, which was filed in U.S. District Court in Manhattan today.’

Apple has been using the term ‘iBook’ for their line of laptops sold between 1999 to 2006 and have already registered the mark (International Registration Number 874453) against computers, computer hardware, computer peripherals and users manuals sold therewith. It was only when Apple decided to use the term for electronic books, something not explicitly covered by their trademark, that Colby took action. In 2010 Apple started using the term ‘iBooks’ and Colby wants to preserve the existing goodwill in the ‘iBooks’ name, as distinct from ‘iBook’ in this case.     

However, Colby fears that Apple’s trademark will have negative repercussions for the iBooks imprint. The complaint is reminiscent of the troubles envisaged by iCloud, and reads ‘Apple’s use of the mark ‘iBooks’ to denote the electronic library that can be accessed via its iPad tablet computer and its iPhone is likely to overwhelm the good will of plaintiffs ‘ibooks’ and ipicturebooks’ marks and render them virtually worthless’. 

Due to their legal resources, and on occasion some technicalities, Apple have so far managed to fight or settle the majority of trademark disputes brought against them.  In this case, the fact that Colby does not own a trade mark for the brand will make their case more difficult.  Apple last year secured ownership of a separate IBOOKS trademark, previously in the hands of an Isle of Man corporation, which covers software used to support electronic books, and also filed for a far more comprehensive IBOOKS mark (US serial number 85008412). However the new application comes long after Colby’s use of the brand, and the first commercial use of the earlier registration is recorded in 2000, also after the iBooks imprint was used.

Colby seeks injunctive relief and monetary damages (which have so far been unspecified). Both Apple and Colby have so far not commented on the lawsuit.  In light of Apple’s success in holding onto the iPad and iPhone brands against tech giants Cisco and Fujitsu, and their considerable marketing efforts, it is hard to imagine their letting go of the brand.  It will be interesting to see how far Colby is willing to go to retain control.

Trademark Infringement and Apple – a familiar story?

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It’s been widely reported that Apple is being sued by iCloud Communications, an Arizona based company, following its announcement about the launch Apple iCloud Services.

iCloud Communications’ lawsuit states that Apple is infringing its trademarked name iCloud. Apple has been involved in numerous lawsuits to do with copyright and trademark infringement within the last few years.

The idea behind Apple’s iCloud Services is that it will allow users to store all their data, such as music and photos, on the secure servers for easy access.  The service will be available from this Autumn and will be free to use for the first 5GB of storage.

iCloud Communications have stated that the online services Apple is providing are very similar to what they themselves provide:  ‘The goods and services with which Apple intends to use the ‘iCloud’ mark are identical to or closely related to the goods and services that have been offer by iCloud Communications under iCloud Marks since its formation in 2005.’

The company claims its business is already being affected by Apple’s new service announcement. It believes the term ‘iCloud’ is now being associated with Apple rather than with iCloud Communications, and so the company is seeking monetary relief.  It is also requiring Apple to stop using the name iCloud for any of its services.

It is not the first time Apple has been faced with lawsuits and allegations over trademark infringement. Even the name Apple sparked a legal battle with Apple Corp, the Beatle’s Record labe.  That trademark infringement dispute was resolved when Apple agreed not to use the name for music. Even once Apple launched iTunes, the company still got round the suit by agreeing to include the Beatle’s albums in their iTunes library. Following this, Apple has entered into a number of other legal battles over names they have adopted for their products or services.

For example, Apple has fought with Cisco over the name ‘iPhone’, and is fighting with Microsoft and McIntosh labs of Macintosh computers over the name ‘App Store’. So Apple’s clash with iCloud Communications follows in the line of many others.

Using such common names as Apple has chosen to do, it is not surprising that the company has run into a fair amount of legal trouble over them. Apple’s use of the lower-case ‘i’ being placed in front of common words is bound to result in other companies who also have similar names and ideas.

iCloud Communications in its lawsuit even pointed out Apple’s tendency to do so. They stated, ‘although Apple aggressively protects its trademark rights, Apple has a long and well known history of knowingly and willfully treading on the trademark rights of others’

Apple has already spent $4.5 million on purchasing the domain name icloud.com, whilst iCloud Communications owns the domain name geticloud.com. So far Apple has not commented on the lawsuit, but by the look of things Apple must once again fight off a trademark suit in order to keep the name. In previous cases Apple has managed to settle out of court and has not had to change its desired product names. Will Apple be able to do the same this time?