For those who believe they were Johnnie Cochrane in a former life, here's your chance to prove it. Two recent trademark cases are good examples of the type of situations trademark lawyers routinely provide legal advice on. How would you decide these cases? Unless you come up with the same conclusions as the courts, you may be wise to stick to marketing and forget about mailing that application to law school.
Case #1: "Eternity" versus "Eternity"
Pusha Investments is a clothing wholesaler in Manchester, England. They filed a trademark application in that country to register the word "Eternity" for use in association with clothing. Calvin Klein opposed the trademark's registration, basing the opposition on the reputation that the word had earned for him in the fragrance market.
"Eternity" perfume ranked 7th in the UK in the list of the top selling fragrances for women. Sales exceeded #10 million, and more than #3 million was spent by CK in promoting the brand.
CK submitted evidence to England's Opposition Board that showed it was a common practice for a designer's name to be associated with both perfumes and clothing. His evidence showed that Chanel, Yves St. Laurent and Ralph Lauren all did it. CK argued that if the Pusha trademark became registered, the public would be confused into believing there was a connection between them when that was not so.
Pusha argued that despite CK's reputation, he never used the word "Eternity" when selling clothing, nor for that matter did CK give clothing away as a gift to purchasers of his fragrances. Pusha further argued that because the word "Eternity" was so closely linked to a perfume, the public would not assume any connection with that word should another use it in association with an unrelated product.
So, how would you decide the case? To help you along, here are some general principles of trademark law to consider. Under trademark law, two people can have identical trade marks so long as the class of goods or services are reasonably different. Revlon can use the word "Red" for perfume, whereas the musical group "Simply Red" can use the word "Red" on its own for entertainment services.
Remember, though, there are exceptions to every rule, and the ultimate question is whether this is a situation where the exception ought to apply (and you thought being a trademark lawyer was easy).
The Opposition Board accepted that "Eternity" was a well-known brand of perfume. The Board also accepted that CK had an extensive reputation in both the fragrance and clothing fields.
The Board decided in favour of CK: lthe likelihood of deception and confusion of a significant number of the public must be very great. There is no doubt...that "Eternity" is very well known in relation to fragrances...the same purchasers of such goods will be the purchasers of items of clothing in department stores and fashion shops and it is easy to see that such purchasers would have kcause to wonderm as to the origin of the goods.n
Case #2: Fighting Skydome
For those not familiar with Toronto's sporting scene, Skydome is the open-air stadium housing the Toronto Bluejays' baseball diamond.
Skydome submitted a trademark application to register the stadium's tagline, "Where The World Comes To Play." The application was opposed by a Toronto souvenir manufacturer who had already registered the trademark "Toronto Come To Play" for use with many of the same trinket type goods Skydome planned to use their tagline with.
Here are some principles of trademark law to consider to help you figure out who should win the case. In assessing whether two trademarks are confusingly similar, the degree of resemblance in appearance or sound is often a critical factor. Trademarks should be considered as a whole, and not broken down into their parts. As well, the first words in a phrase are given the most weight in distinguishing between trademarks because the human eye reads from left to right.
So, how would you decide the case?
The Canadian Trademarks Office decided against Skydome, saying "there is some degree of resemblance between the marks at issue in all respects. Although one refers to the 'world' and the other to 'Toronto,' both include the phrase 'comes to play.'...Insofar as the wares of the parties are similar...the marks are confusing given that they have some degree of resemblance."
Skydome appealed to the Federal Court of Canada, and won. The Court said: "the trademarks appear and sound different even though the words 'come to play' are common to both. The marks are quite different in their appearance. ...In this case, there is no similarity between the first word of each mark...Although both marks suggest the idea of joining people for recreational purposes, when each mark is taken as a whole...confusion between them is unlikely."