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11 Apr 2024
BY Dr. Bernard Dippenaar

Celebrities, major brands and Intellectual Property

Client feedback has shown that articles dealing with celebrities and major brands are relatable, and interesting and bring some life to the field of Intellectual Property ("IP”).  In this article, we’ll discuss a number of recent IP cases dealing with well-known personalities and/or prominent brands, exploring the fascinating intersections between fame, creativity and legal protection.

Thom Browne – there’s nothing unusual about Thom

A Chinese company, Dongguan Tinda Apparel, filed an application to register the trade mark, Thom Bonzero, for clothing in the EU.  The US clothing company, Thom Browne, filed an opposition based on an EU registration for the trade mark Thom Browne.

The US company claimed that:

  • The Thom Browne brand is well-known;
  • The goods and services are identical;
  • There will be confusion;
  • Tom may be common, but the name Thom is unusual; and
  • That there was bad faith.

The European Intellectual Property Office (EUIPO) rejected the opposition. Its reasoning was that:

  • The product area, clothing, is one where consumer attention is average;
  • The name Thom is not that unusual and is an abbreviation of Thomas;
  • Although the first part of a trade mark, in this case, ‘Thom', is generally regarded as the most significant feature, surnames are better indicators of origin and people tend to pay more attention to them;
  • The surnames Browne and Bonzero are in no way similar;
  • The Thom Browne trade mark really isn’t that well known in the EU – yes it’s quite well known in the UK but…. well, that’s no longer in the EU, is it?

Calvin Klein – absolutely nothing like Cailin Kailun

Image credit

In Japan, a Chinese individual applied to register the trade mark, Cailin Kailun, for clothing which was opposed by Calvin Klein, on the basis of a likelihood of confusion.

The Japan Patent Office (“JPO”) accepted that Calvin Klein is a well-known trade mark for clothing. But it went on to find that there was no likelihood of confusion.

Why? Well, there are significant visual, phonetic, and conceptual differences between the marks. And the trade mark Cailin Kailun has no meaning at all.

Kanye West – not feeling the love

Image credit

The estate of the late singer Donna Summer (think Hot Stuff and Love to Love You Baby) is suing Kanye West (plain Ye to his mates) for copyright infringement – the claim is that Kanye West used a sample of Donna Summer’s 1977 song I Feel Love on a new album Good (Don’t Die), without getting clearance from Donna Summer’s estate.

Kanye claims that he did seek clearance, albeit just a week before the release of the album (a last-minute thought then). But the request was refused because of a potential degradation to Summer’s legacy’ - this seemingly relates to the fact that ‘West is known as a controversial public figure whose conduct has led numerous brands and business partners to disassociate from him.’

The Donna Summer estate has said that it wants ‘no association with West’s controversial history’.  

Sinead O’Connor – Nothing compares to… an ex-president who thinks he’s above the law

The estate of the late Irish singer Sinead O’Connor - best known for her huge hit Nothing Compares 2U - has made it clear that it is extremely upset about Donald Trump’s use of her greatest song at his rallies.  The estate claims that O’Connor lived by a ‘fierce moral code’ and had a very low opinion of Donald Trump – she apparently referred to him as a ‘biblical devil’.

As far as we can tell no IP right has been raised here. Just common decency!

Rihanna – don’t forget novelty

Image via Puma

The singer Rihanna has long worked as an ‘influencer’ for the shoe manufacturer Puma.

In 2016, Puma applied for and obtained for an EU design registration (RCD) for a shoe known as the Puma Creeper Shoe.  But in 2019, a Dutch footwear company sought cancellation of the registration on the basis that there had been prior disclosure of the design.

But who on earth would have made the disclosure? Well… it turns out that the discloser was in fact the influencer - the claim of prior disclosure related to a 2014 posting on Rihanna’s Instagram account, a posting that received over 300,000 likes and showed her wearing the Puma Creeper Shoe. The Dutch company argued that the effect of this 2014 disclosure was that by the time the application for registration was filed in 2016, the shoe no longer had the required novelty and individual character.  The European Court of Justice confirmed this on 6 March 2024.

The lesson, with apologies to Crosby, Still, Nash & Young, teaches your influencers well! The takeaway message here is that a simple social media post could result in a patent or design being rendered invalid, which could (arguably) cost the company millions as it no longer has a monopoly to enjoy the fruits of its labour.

Reviewed by Gaelyn Scott, Head of ENS’ IP practice.

 

Dr Bernard Dippenaar

Senior Associate | Intellectual Property

bdippenaar@ENSafrica.com