Roses or Rosé? Trademark Fame and Trademark Infringement

Recently, the band Guns N’ Roses filed a trademark lawsuit against Oskar Blues Brewery, a Colorado- based brewery for alleged trademark infringement. The lawsuit alleges that the defendant’s “Guns N’ Rosé” ale and associated merchandise, “intentionally trade on the GNR’s goodwill, prestige, and fame without GNR’s approval, license, or consent”. Guns N’ Roses seeks damages and legal costs.

Particularly interesting is the lawsuit’s mention of the mark’s fame. American case law has repeatedly highlighted fame’s importance in determining the existence of trademark confusion. In the Application of E.I. Dupont De Nemours & Co, 476 F. 2d 1357 (CCPA 1973), the Federal Circuit Court of Appeals specifically stated the “fame of the prior mark” must be considered when “testing for the likelihood of confusion”. The United States Court of Appeal, Federal Circuit, in Palm Bay Imports Inc. v Veuve Clicquot Ponsardin Maison Fondee En 1972, ruled that famous marks “enjoy a wide latitude of legal protection”. Particularly relevant for this lawsuit, Starbucks U.S. Brands, LLC & Starbucks Corporation v. Marshall S. Ruben says that “As the fame of the mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines.”

With a US trademark infringement lawsuit relying heavily on the mark’s fame, one might wonder how Canadian law addresses famous trade-marks. The answer is somewhat differently.

In Mattel, Inc. v 3894207 Canada Inc., the Supreme Court of Canada ruled that BARBIE, to distinguish restaurant and catering services, was not confusing with Mattel’s registered trade-mark “BARBIE” for BARBIE dolls. The Supreme Court of Canada stated that a “trade-mark’s fame is capable of carrying the mark across product lines where lesser marks would be circumscribed to their traditional wares or services” but fame “does not deliver the knockout blow.” Related, the Supreme Court of Canada, in Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, says that “Fame does not provide absolute protection for a trade-mark” and “It is one factor that must be assessed with all the others.” Therefore, a Canadian trade-mark infringement’s lawsuit that focused heavily on a trade-mark’s fame might be less successful than an American trademark infringement lawsuit relying on a mark’s fame.

These different approaches, again, highlight intellectual property’s jurisdiction-specific nature. Additionally, it will be interesting to see what results from this lawsuit.

Authored by Margot Mary Davis

Please note this piece does not constitute legal advice.

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