You sometimes see images of trade-marks emblazoned on tee-shirts or other goods and the trade-mark has been altered in some significant way but still bears a faint resemblance to the original.
Well, an entrepreneur in California has taken the practice
to a new level by selling chocolate bars and other types of candy in wrappers
bearing a resemblance to various products sold by Hershey. The difference
between your average Kit-Kat bar and the “KeefKat”
is that the KeefKat has been laced with THC – the active ingredient in
marijuana. It seems the entrepreneur ran a business selling various products
relating to marijuana. (Image from www.abclocal.go.com)
Hershey has sued him, not for trade-mark infringement – there is little likelihood the average person would be confused and think that Hershey was seeking such things – but for dilution of its trade-marks. In Canada, it is called depreciation of goodwill.
The difficulty here is that the defendant company is not actually using any of Hershey’s trade-marks. In that sense the case is similar to an earlier case where Louis Vuitton sued a company called Haute Diggity Dog for using the mark “Chewy Vuiton” together with an interlocking C and V similar to Louis Vuitton’s interlocking V and T.
Louis Vuitton lost. The only difference in this case is the association with an illegal drug. Whether that creates an opportunity to find against the defendant business will be interesting to see.
In a recent Supreme Court of Canada case, Mattel had sued a restaurant owner over the use of the name “Barbie” claiming, among other things, that the “Barbie” trade-mark was famous and that the use of the mark by the restaurant would depreciate the goodwill in the name. The Supreme Court of Canada ruled that, when looking at all the circumstances, there was no infringement because there was no confusion. The average consumer would not believe that Mattel was running a family restaurant. It is a slightly different set of circumstances than those in the KeefKat case in that the restaurant was using the same name (Barbie) that Mattel had trade-marked. Here it is a parody which is being used.
An interesting side note to the story is that the Internet has spread the story far and wide and now many more people are aware of the wacky candy than might otherwise be. There are different ways of acting to preserve rights and it is increasingly becoming obvious that a splashy lawsuit or cease and desist letter might not always be the best way to accomplish the stated goal of policing and maintaining the integrity of a trade-mark. All of which is not to say that trade-mark owners should do nothing when they see other parties use their marks, only that the twenty kilogram mallet might not be the best solution.
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