Does use of a trade mark within the UK constitute valid use within the EU to evidence enhanced distinctiveness of an EU trade mark?
The judgement of the Shopify vs Shoppi case has important implications for UK trade mark owners.
Seth MacFarlane, creator of the film franchise Ted, is being sued over his alleged violation of the trade dress on a product through the release of a special edition DVD and Blu-Ray of the film. Michael Cram claims ownership of “talking” bottle openers which are said to come with the special edition.
The talking bottle opener is claimed to include, amongst other things, an original plastic handle shape and incorporating no-button activation technology, a single solid colour, a single licensed image below the speaker holes, an original circular design of speaker holes, and a means to trigger sound upon the application of pressure.
|Cram’s Bottle Opener||‘Ted’ Bottle Opener|
It is claimed that the bottle openers are very successful. Cram suggests that he has licensing deals with Major League Baseball, NASCAR, the NFL, and movie and television studios, and that he and the product were the subject of the film Ingenious. The bottle opener retails at $25.99 and is claimed to have sold 10 million units worldwide since 2002.
Cram argues on a number of fronts including that the ‘Ted’ bottle opener constitutes trade dress infringement and also unfair competition.
In the UK, trade dress is protected under the law of passing off, which is essentially a means of remedying unauthorised copying of unregistered trade marks. In order to be successful in demonstrating passing off, a claimant must prove the following:
Based on the claimed history of the product along with the stated sales figures, it appears as though it is arguable that Cram has substantial goodwill in the trade dress.
Misrepresentation may or may not be intentional. Recent UK case law suggests that there would be misrepresentation if the public would assume that the Ted bottle opener (1) is Cram’s bottle opener, (2) is made by the same manufacturer or (3) that it is licensed. Each of these would be assessed taking into account the visual and conceptual similarities and differences between the two products.
The damage to the goodwill may consist of a loss or diversion of trade or dilution of the goodwill. In some cases, a real probability of damage may be sufficient provided that the damage is reasonably foreseeable. There is no evidence available at this time to suggest whether or not the misrepresentation, if any, has resulted in damage to the claimed goodwill.
It will be interesting to see how this matter is interpreted by the US courts.
This is not the first time that Ted has been at the centre of an intellectual property infringement issue. Last year, a Californian production company filed an action against Seth McFarlane stating that Ted was a copy of their character ‘Charlie the Abusive Teddy Bear’. At the time of writing, this dispute is yet to be resolved. Meanwhile, Seth McFarlane continues to press ahead with his plans to release the sequel to Ted later this year.