Will that be a help­ing of porn or ice cream?

The courts don’t see ev­ery case of brand di­lu­tion as clear-cut as the Ben & Jerry bat­tle over in­fringe­ment by Ben & Cherry

Business Day - Business Law and Tax Review - - FRONT PAGE - GAELYN SCOTT

THE news that the com­pany founded by Ben Co­hen and Jerry Green­field, Ben & Jerry’s, has sued a com­pany called Ca­ballero in the US for trade­mark in­fringe­ment, with an in­terim in­ter­dict al­ready be­ing granted, has re­ceived a lot of at­ten­tion. Cer­tainly hav­ing your brand hi­jacked by a porn com­pany is no laugh­ing mat­ter.

Ben & Jerry’s sells a wide range of won­der­ful ice creams, and many of its in­di­vid­ual prod­uct names have been reg­is­tered: names like Cherry Gar­cia, Bos­ton Cream Pie, Peanut But­ter Cups, New York Su­per Fudge Chunk, Choco­late Fudge Brownie and Co­conut Seven Layer Bar.

Ca­ballero’s busi­ness is rather less whole­some — it pro­duces porn movies un­der the name Ben & Cherry. Pop­u­lar ti­tles in­clude Bos­ton Cream Thighs, Peanut But­ter D-Cups, New York Fat & Chunky, and Choco­late Fudge Babe.

You can see why the ice-cream mak­ers were miffed, es­pe­cially as Ca­ballero also uses im­agery used by them, like grassy fields and puffy clouds. But, as some have pointed out, Ben & Jerry’s hasn’t been above us­ing the odd risqué name or phrase it­self — like Karamel Su­tra and taglines like Wanna Spoon.

It’s some­thing that quite a few big com­pa­nies had to deal with in the early days of the in­ter­net, when fa­mous trade­marks were reg­is­tered as do­main names and di­rected at porn sites — for ob­vi­ous rea­sons, Richard Bran­son’s Vir­gin had some prob­lems in this re­gard. But there have long been pro­ce­dures in place to get do­main names that were reg­is­tered in bad faith, or that are deemed to be “abu­sive”, re­turned to their right­ful own­ers. So the do­main is­sue is no longer that im­por­tant. So what grounds do you have for com­plain­ing if some­one uses your brand name in re­la­tion to pornog­ra­phy?

It may not be easy, but it’s most likely that you will want to bring a case of what’s loosely known as trade­mark in­fringe­ment by di­lu­tion. This is the form of in­fringe­ment that al­lows the owner of a reg­is­tered trade­mark with a rep­u­ta­tion to stop an­other com­pany us­ing that trade­mark, or some­thing

In the US… the law was re­cently amended to pro­vide that a mere like­li­hood of di­lu­tion — re­gard­less of ac­tual or likely con­fu­sion or eco­nomic in­jury — will suf­fice

sim­i­lar, if that use takes un­fair ad­van­tage of, or is detri­men­tal to the dis­tinc­tive char­ac­ter or re­pute of the reg­is­tered trade­mark, even if there is no con­fu­sion at all.

Its pur­pose was well un­der­stood by the South African judge who said this of di­lu­tion: if a butcher in a Free State “dorp” calls his busi­ness Rolls Royce Butch­ers, no one will be un­der the il­lu­sion that there is any con­nec­tion with the mo­tor com­pany, yet the name will be eroded.

It’s ac­cepted that this form of in­fringe­ment deals not only with di­lu­tion (ero­sion or blur­ring), but also tar­nish­ment (harm to rep­u­ta­tion). In some cases, the com­pany may feel that there is both, as the credit card com­pany may have done when a con­dom com­pany called its prod­uct Visa.

But the courts have strug­gled with the con­cept of di­lu­tion. There are lawyers who be­lieve that in SA the con­cept’s been dead in the wa­ter ever since the fa­mous case in­volv­ing brewer SAB and Justin Nurse’s firm, Laugh-It-Off Pro­mo­tions. In that case SAB, owner of the Black La­bel brand in SA, tried to stop Laugh-It-Off from us­ing a logo that re­sem­bled the Black La­bel logo, to­gether with word­ing that com­mented on the com­pany’s per­ceived labour prac­tices, like “Black Labour — White Guilt”. The Con­sti­tu­tional Court, which de­cided the mat­ter, held that there was no in­fringe­ment be­cause there was no like­li­hood of eco­nomic loss, some­thing that may be dif­fi­cult to es­tab­lish in many di­lu­tion cases.

In Europe the law is also quite con­fused. In one case in­volv­ing In­tel, Europe’s high­est court ruled that to prove di­lu­tion you need to show that

the al­leged di­lu­tion has led to some change in eco­nomic be­hav­iour on the part of con­sumers.

In a later case in­volv­ing L’Oreal, the same court held that there will be di­lu­tion if you can show that the al­leged in­fringer gained some com­mer­cial ad­van­tage from its ac­tion.

And in a very re­cent case it held that a trade­mark for Bo­tox for phar­ma­ceu­ti­cals was di­luted when two dif­fer­ent com­pa­nies tried to reg­is­ter the marks Bo­to­cyl and Bo­tolist — the court was not un­moved by the fact that both com­pa­nies ad­mit­ted that, al­though their prod­ucts did not in­clude Bo­tox’s ac­tive in­gre­di­ent (bo­tulinum toxin), they had cho­sen their names to take ad­van­tage of the im­age as­so­ci­ated with Bo­tox.

In the US, on the other hand, the law was re­cently amended to pro­vide that a mere like­li­hood of di­lu­tion — re­gard­less of ac­tual or likely con­fu­sion or eco­nomic in­jury — will suf­fice.

So di­lu­tion is not with­out its dif­fi­cul­ties. You might there­fore also want to claim that the porn mer­chant is com­mit­ting the more tra­di­tional form of trade­mark in­fringe­ment, namely in­fringe­ment based on con­fu­sion. The test in such a case is this: bear­ing in mind the sim­i­lar­i­ties be­tween the marks and sim­i­lar­i­ties be­tween the prod­ucts of the two com­pa­nies, is there a like­li­hood of con­sumer con­fu­sion — in other words, a like­li­hood that con­sumers will won­der whether the prod­ucts come from the same source?

When mak­ing this en­quiry the judge will try to wear the hat of an or­di­nary con­sumer (bear in mind that the av­er­age con­sumer has im­per­fect rec­ol­lec­tion, does not see trade­marks side by side, and is most likely to re­mem­ber the dis­tinc­tive and dom­i­nant fea­ture of a mark). The judge will also take an over­all view of the mat­ter, and con­sider that a lesser de­gree of sim­i­lar­ity be­tween the prod­ucts may be off­set by a greater de­gree of sim­i­lar­ity be­tween the trade­marks, and vice versa.

So even if your busi­ness is far re­moved from porn, the fact that your name is dis­tinc­tive and the porn mer­chant’s name is iden­ti­cal or neari­den­ti­cal to yours, may be enough to es­tab­lish that there is an in­fringe­ment based on con­fu­sion.

Pic­ture: THINKSTOCK

TRADE­MARK IN­FRINGE­MENT

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