Just in time for Halloween, the Hershey Company has settled its trademark infringement lawsuit against a marijuana edibles company that sold candy closely resembling several of Hershey’s iconic brands.
A website’s distinctive appearance, layout, and design qualities—its “look and feel”—are often the most important and effective tools with which a company can make a first impression on consumers and market its brand. Now, according to one federal court, companies can use trademark law to protect their unique website designs from imitators.
With summer just around the corner (fingers crossed!), it looks like Unilever wants to freeze out any customer confusion that may arise at ice cream trucks around the country. On Monday, the consumer goods giant sued Wells Enterprises in New York Federal District Court claiming that Wells’s newly-designed Bomb Pops packaging “mimics and imitates” Unilever’s Firecracker Popsicle packaging, resulting in a claim of trade dress infringement. Unilever also alleged unfair competition and deceptive trade practices.
For the last 13 years, Zurich confectioner Lindt has been at war with German chocolatier Confiserie Riegelein in an effort to prevent it from selling similarly gold-foil-wrapped chocolate bunnies. The battle, which began in 2000, ended this past Thursday when Germany’s Federal Court of Justice rejected Lindt’s final appeal to protect its popular holiday treat, the Goldbunny. The decision determined that it was not legally possible to trademark a gold-foil-wrapped chocolate bunny that had been in general use for decades, even though Lindt has been selling Goldbunnies since 1952.
It comes as no surprise that Apple owns numerous trademarks for its well-known Mac, iPod, iPhone, iPad and other products. However, Apple has taken its trademark protection to a new level by obtaining a registration for the look and lay-out of its unique glass stores.
A few months ago we wrote a blog post on Nestlé’s battle with Kraft over the unique purple color of Cadbury chocolate bar wrappers. While Nestlé lost the battle over color, it recently won the battle over shape.
Ending a trademark battle between candy competitors Kraft and Nestle, an English High Court on Tuesday granted UK chocolate company Cadbury (acquired by Kraft in 2010) the exclusive rights to use Pantone 2865c, the unique purple color of its chocolate bar wrappers.
In a decision eagerly awaited by both the fashion industry and the trademark bar, the U.S. Court of Appeals for the Second Circuit ruled on September 5, 2012 in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., No. 11-3303-cv, that fashion designer Christian Louboutin could protect its distinctive lacquered red shoe soles as a trademark, but that competitor Yves Saint-Laurent’s monochromatic red shoes did not use, and therefore did not infringe, Louboutin’s trademark. Both sides claimed victory. Louboutin claimed vindication in that the appellate court recognized Louboutin’s trademark rights in its red lacquered sole, and overturned the lower’s ruling that effectively barred trademark protection for single colors in the fashion industry. Yves St. Laurent (“YSL”) claimed victory, noting that the appellate court found that YSL’s shoes did not infringe Louboutin’s trademarks, and that YSL would now be free to continue selling its monochromatic red shoes.
So, everyone’s a winner, right?
Not really. The big loser remains the fashion industry in general, for which this decision provides little guidance in a very muddled area of the law.
The Italian luxury goods company Gucci recently found some success in policing its trademark in the form of a $4.66 million pay out from Guess Inc. after making a U.S. District Judge believe that Guess had "Gucci-ized" its brand by knocking off a host of items including shoes. The $4.66 million windfall is a fraction of the more than $120 million originally sought by the Italian luxury goods company in their trademark infringement suit.
Despite the financial and creative success of the U.S. fashion industry, U.S. courts struggle to provide adequate protection for fashion designs, although promising legislation is pending in Congress.
Currently, U.S. trademark law will protect a design only if it serves a branding function (for example, the famous Burberry plaid), and U.S. copyright law, which protects creative works, typically does not protect fashion designs because copyright does not protect “useful articles,” and designs are often intrinsic to the “useful” nature of the apparel. U.S. design patent law requires that a design be “novel” and “nonobvious” based on prior designs, which is a very difficult standard to achieve. Like copyright, design patent law will not protect functional elements, a concept that is broadly construed when it comes to the fashion industry.
Over the past several years, various cases have illustrated the difficulties fashion houses face in protecting their designs. (For example, see our post on Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.) There is some hope for designers, though, as Congress has not been completely blind to the need for federal design protection laws.