IT'S ALL ABOUT TRADE MARKS

Good morning everyone. We hope you are all staying safe and sane. At this point most of us have grown accustomed to the situation and are trying to make the best out of it.

Now for today’s news.

3M fighting the rise of counterfeit masks

3M is a Minnesota based company specialized in industrial and safety supplies. Since the beginning of this pandemic, demand for masks has obviously grown exponentially, probably beyond the capacity of the company. Now, unfortunately, this state of emergency and the high demand for masks are the ideal breeding ground for scams. 3M now has filed a complaint against a company called “Performance Supply LLC” a company that, allegedly, sent a formal quote to New York City’s Office of Citywide Procurement, offering to sell millions of 3M-brand N95 respirator masks at a grossly inflated price even though the company is not an authorized distributor of any of 3M’s products and has no rights to use 3M’s trade marks. This price gouging behaviour is very harmful to the company’s image and brand. 3M is now seeking an injunctive relief (to prevent the competitor to further use 3M trade mark) and damages that, according to the company, will be donated to a COVID-19 relief fund.

Lululemon under the spotlight for trade mark infringement

Aliign Activation Wear is an LA-based activewear company that has filed for trade mark infringement against Lululemon. The “Aliign” trade mark has been used since 2011, that is 5 years before Lululemon came out with its now well-known Align collection. According to Aliign, Lululemon knowingly and wilfully started using, selling and even filing for trade mark protection for its Align collection. With its actions, Lululemon has given rise to a likelihood of confusion amongst consumers as to the origin, sponsorship or relationship between the two companies. As a result of this situation, Allign LLC has decided to file for trademark infringement and unfair competition amongst others, seeking damages for a total of 20 million $.

Google obliged to pay press editors in France

We are starting to see some developments resulting from the new copyright directive. The first results are felt in France where the French competition authority has now ordered Google to enter into negotiations with French news publishers in order to start paying them for displaying extracts of an article in searches. This decision comes as the conclusion of a dispute between the French publishers association and Google, after Google decided to stop publishing extracts from French publishers to avoid having to negotiate remuneration with them. France was the first Member State to implement article 15 of the new Copyright Directive (press publishers' right), back in October last year. Let’s see how this is implemented by all other Member States.

Michael Jordan and the power of phonetics

Michael Jordan has secured a win regarding a trade mark infringement committed by a Chinese Sports company called “Qiaodan Sports”. At first look, the infringement is not noticeable. However, the phonetic pronunciation of “Qiaodan” in Chinese is identical as “Jordan” and the name was used in combination with a logo that represented the silhouette of a basketball player. In doing so, Qiaodan confused consumers into believing that Michael Jordan was somehow associated or endorsing the Chinese company. Now the dispute has been settled in favour of Jordan and Qiaodan will have to stop using his name.

Protecting green and gold as a trade mark

If you are a fan of golf and golf competitions, you have probably heard of the Masters Tournament organized by the Augusta National Golf Club and that handed, as part of the prize, the well-known green jacket. This jacket represents the championship winner’s status as an honorary member of one of the most exclusive golf clubs in the world, so it’s not just A jacket. The winner can basically wear his jacket anywhere (he can put it on to go grocery shopping) until next year’s championship, where he will only be able to wear it once a year during the event as an ex-champion.

Now, all that is very nice, but what does it have to do with trade marks? Well, because the jacket (with its unique green colour and gold buttons) has acquired meaning and significance outside the golf world, Augusta National Inc. filed for trade mark registration. Not for the design, but for the use of the colour green on a jacket in combination with the colour gold applied to three waist buttons and two sleeve buttons. Although the application was initially denied by the US Patent Office due to lack of distinctiveness, Augusta National has managed to secure the trade mark registration by providing evidence that this combination of colours has actually acquired distinctiveness in the eyes of consumers (if you search “green jacket” on Google, this is the jacket that appears; it is used by videogame developers for golf games; it is immediately identified with the Masters Tournament…)

Colours can be powerful.

This is all for today. You can expect our monthly blog post on Thursday. In the meantime, enjoy your week and #StayHome.

Interesting readings:

• Embedding other’s Instagram photos without authorization is legal – The Fashion Law - https://www.thefashionlaw.com/embedding-others-photos-without-their-authorization-is-legally-above-board-says-sdny/