JACK DANIEL'S A WHISKEY OR A TOY?
Analyzing this court case, very controversial between the parties, which began with the lawsuit by Jack Daniel's Properties, Inc. v. VIP Products LLC, claiming misuse, for infringement of the Trademark Act.
This claim was initiated when Jack Daniel's became aware of the sale of a toy for dogs and/or pets with the shape and/or figures of its emblematic whiskey in its brand identity.
This product was published in the official store of Vip Products, and also in other media including Amazon, at a commercial value of US$ 20.
This toy called "Bad Spaniels - The Old No. 2 - on your Tennessee carpet", which in Spanish refers to having "feces on the carpet", has a very similar shape to the emblematic bottle of Jack Daniel's whiskey, not only that, but it also uses the colors on its label, similar figures and typographies. One of the label's statements names the product as "100% bad smelling".
One of the commercial strategies of the company Vip Products, is to manufacture emblematic products, with a change of name, and similar form, where we can name the beer "Corona" and the drink "Gatorade", which are published on its website, among other products.
In the course of the trial, two marked positions were shown, where the plaintiff argues that the product "Bad Spaniels", undermines the integrity and prestige of its brand in the market, besides confusing the customer, who may believe that it is a product manufactured by the brand Jack Daniel's Properties, Inc.
In the case of VIP Products LLC, it argues that the product is a "humorous parody" of the emblematic product and that it only seeks to "amuse" consumers. In addition to showing in its arguments that the product for sale does not seek to take advantage of the fame of the brand.
In a first instance, the United States District Court for the District of Arizona, Judge Stephen M. McNamee ruled in favor of Jack Daniel's and prohibited VIP from continuing to sell the toy.
VIP appealed to the U.S. Court of Appeals for the Ninth Circuit, which reversed most of Judge McNamee's ruling in a unanimous decision, so Jack Daniel's Properties, Inc. went to the U.S. Supreme Court to appeal the decision.
Can a liquor be confused with a pet toy in the brand classification? Clearly not.
But, if it's a case like this, it's clearly misleading.
In our opinion, the mere fact of taking advantage of the fame of a clearly notorious trademark such as Jack Daniel's and the use of the trademark, bottle model and graphic identity, where branding and corporate identity have been created for years, should not damage its image even for a "joke" or "funny parody".
Where are the limits of misuse for trademarks, in their protection and acquired rights?
The use of the ornamental shape of the bottle design, which clearly identifies the product in the market and label, shows the bad faith of taking advantage of the "prestige" and "fame" of Jack Daniel's in the market.
In the case of a refusal to the claim, the door will be open for new products to be generated, affecting the trademark rights of well-known brands.
The prestige and identity of a trademark should not be affected by copies, parodies or jokes that affect its integrity in the market.
It is time that new products and brands, if they want to be remembered in their history, should not be at the expense of brands that have already walked a path of branding construction.
Therefore, we are pleased with the recent ruling of Justice Kagan, who was in charge of the case.
Editor: MIREGISTRODEMARCA.COM
