7 top trade mark wins from Dawn Ellmore Employment’s Luke Rehbein

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Every day brands, businesses and well-known names all over the world are battling for the rights to Intellectual Property (IP). Whether it’s Iceland (the country) versus Iceland (the supermarket) or Apple (the record label) v Apple (the inventors of the iPhone). Or McDonalds losing the rights to the Big Mac trade mark in the EU. Drama is everywhere in the world of IP law. And here, our Associate Director of Patents and Trademarks Luke Rehbein examines 7 of the best trade mark battles and victories.

1. Iceland v Iceland

In April 2019, the EU Intellectual Property Office (EUIPO) finally ended a long-running dispute between a country and a supermarket chain. That’s right – the much publicised Iceland vs Iceland case. The country and supermarket of the same name have spent years arguing over the use of the world ‘Iceland’ for business purposes. In a nutshell, Iceland the country wanted Iceland the store to stop using ‘Iceland’ the word as a trade mark within the EU. 

The supermarket chain targeted a number of businesses in Iceland over using the word ‘Iceland’ on certain services and products. Naturally outraged at this, Government officials for Iceland (the country) got involved. They wanted to claim the name of their country back, using patent attorney Árnason Faktor.

Perhaps unsurprisingly, the EUIPO decided that to most people the world ‘Iceland’ is synonymous with the name of a country that’s existed for millennia. Iceland, the supermarket chain has a lesser claim to the word, as they have been using it since the 1970s. The final decision is that Iceland the store can’t reasonably trade mark the name of a country that has been around since the 800s.

2. Elvis Juice v Elvis Presley 

Showing precisely why the world of IP and trade mark law is so fascinating, in 2016, the Elvis Presley’s estate launched legal action against a brewery over the name of their product. 

While Elvis Presley the singer died in 1977, his name and trade mark lives on. In response to the Presley Estate’s demands that BrewDog brewery cease production of Elvis Juice IPA, the founders changed their name by deed poll to ‘Elvis’. This meant they could argue in court that they named the beer after themselves. 

While the first ruling went in the Presley estate’s favour, the Scottish brewery launched an appeal and had it overturned in January 2018. Elvis Juice lives. 

3. Messi v MASSI

Lionel Andres Messi Cuccittini, aka hugely popular footballer Lionel Messi, fought his trade mark case for seven years. In April 2018, a Luxembourg high court granted him the legal right to use his name as a trade mark on sporting products. 

In August 2011, Messi filed a trade mark application with the EUIPO. He was immediately challenged by MASSI, a big cycling brand in Spain. The brand said that Messi was too similar to MASSI and would cause confusion. In 2013, the EUIPO ruled on their side, before it was eventually overturned after a few more years of legal fighting. 

4. Apple v Apple

Apple Computer v Apple Corps has been an ongoing trade mark dispute since 1978. Steve Jobs named his computer company Apple in 1976, despite The Beatles’ holding company and record label Apple Records already using the name.  

Before long, Apple Corps took Apple Computer to court for trade mark violation. It was first ‘settled’ in 1981 with Apple Computer agreeing never to make its move into the music industry. 

Obviously, they didn’t stick to that, and launched iTunes in 2003, prompting more legal fights. Matters came to a head over the next few years and it wasn’t until 2007 that Apple Corps (now Apple Inc) was granted all the trade marks that relate to ‘Apple’. They then licensed specific trade marks back to Apple Corps, including the apple shaped logo. It took until 2010 for The Beatles’ back catalogue to join iTunes after many years of back and forth negotiations. Possibly one of the longest running trade mark disputes.

5. WWF v WWF

Do you think of wrestling or wildlife when you hear ‘WWF’? The World Wildlife Fund (WWF) was there first and challenged wrestling company Titan Sports when it changed its brand to World Wrestling Foundation. The ensuing legal battle lasted 13 years. 

In 2001, a court ruled in the charity’s favour to protect its brand, and the wrestling version of WWF threatened an appeal. In the end, however, the wrestling company conceded and spent a fortune changing its brand again, this time to World Wrestling Entertainment. 

6. McDonalds v Supermac’s

In a trade mark battle of David and Goliath proportions, fast food behemoth McDonald’s lost its rights to use the trade mark for its Big Mac in the EU. The landmark ruling from the EUIPO in January 2019, said that McDonald’s failed to use the trade mark in accordance with EU law. 

Supermac’s is a chain of fast-food burger restaurants in Ireland. It launched the legal fight against McDonald’s to aid its expansion into the rest of the UK and Europe. McDonald’s had previously stopped this by saying that its Big Mac would be confused with Supermac’s similar product (called the ‘Supermac’) by customers. 

The EUIPO disagreed and ruled that McDonald’s had not satisfactorily proven that Big Mac, which was trade marked by the fast food giant in 1996, is used as a burger or restaurant name. Pat McDonagh, founder of Supermac’s says in a statement following the ruling: “This is a victory for all small businesses. It prevents bigger companies from hoarding trade marks with no intention of using them.”

7. easyJet v Netflix

This one is ongoing, but demonstrates the claims made by brands when attempting to protect trade marks. In September 2018, owner of easyJet, Sir Stelios Haji-Ioannou launched legal proceedings against Netflix for trade mark infringement. 

His argument is that a Netflix comedy series called Easy infringes on his business, easyGroup. While Haji-Ioannou wants to bring about a High Court injunction to stop Easy streaming in Europe, Netflix say in its statement that: “Viewers can tell the difference between a show they watch and a plane they fly in.”

While that is undoubtedly true, it’s yet to be seen how this case will end. The easyGroup owns more than 1,000 trade marks and told the Guardian that it “takes its protection from unauthorised use very seriously.”

About Dawn Ellmore Employment

Dawn Ellmore Employment is a market leader in intellectual property and legal recruitment.