Topic 1 - TRADEMARK Flashcards
Scandecor Development AB v Scandecor Marketing AV
This case involved a trademark dispute between two companies with similar names: Scandecor Developments AB and Scandecor Marketing AV (affiliated with Scandecor Ltd). Here’s a more detailed breakdown:
Background:
Scandecor International, a larger company, owned the “Scandecor” trademarks across various products like furniture and homeware.
Scandecor Ltd, a successful poster business, operated under a license agreement with Scandecor International to use the “Scandecor” name.
In 1994, Scandecor International became insolvent and its assets, including the UK trademarks, were acquired by Scandecor Developments AB (a separate entity).
The Dispute:
After acquiring the trademarks, Scandecor Developments sued Scandecor Ltd for trademark infringement as they continued using “Scandecor” for posters without a license.
Scandecor Ltd argued that due to the past extensive use of “Scandecor” with consumer recognition, the trademarks had lost their distinctiveness and become misleading. They counter-claimed for revocation of the trademarks under UK law.
Key Issues:
Did Scandecor Developments have the legitimate right to enforce the trademarks?
Did the past use of “Scandecor” by Scandecor Ltd weaken the trademarks’ distinctiveness to the point of misleading consumers?
Court’s Reasoning:
The court acknowledged the potential confusion caused by the past licensing agreement. However, they upheld the validity of the trademarks owned by Scandecor Developments.
The court considered the “distinctiveness” of the trademarks. While Scandecor Ltd might have established brand recognition for posters, Developments retained rights for other products (not including calendars and cards sold by Ltd).
Outcome:
The court allowed Scandecor Developments to enforce their trademark rights for most products (excluding calendars and cards).
Importantly, Scandecor Ltd was allowed to continue using “Scandecor” in their business name due to past established use. This created a situation where both parties could use “Scandecor” with some limitations.
Qualities v Jacobson Products
Plaintiff Qualitex Co had used a green-gold color for dry cleaning “press pad” which it sold to dry cleaning firms to use in their presses. Defendant Jacobson Products Co. was a rival of Qualitex. In 1989, Jacobson began selling their own pads to dry cleaners which were a similar color to those of Qualitex. In response, Qualitex filed a lawsuit against Jacobson in the United States District Court. In 1991, Qualitex registered the green-gold color of its pads with the United States Patent and Trademark Office as a trademark, and subsequently added a trademark infringement count to its lawsuit. The District Court found for Qualitex, but the United States Court of Appeals for the Ninth Circuit set aside the judgment, on the grounds that color alone could not be registered as a trademark.
Justice Breyer, writing for a unanimous 9-0 court, overturned the Ninth Circuit’s decision, holding that the Lanham Act was very broad in its definition of what a trademark could be. The definition section of the Lanham Act, 15 U.S.C. § 1127, defines trademarks as including “any word, name, symbol, or device, or any combination thereof”. Breyer reasoned that colors could constitute descriptive trademarks, because while colors do not automatically evoke a connection to any product by themselves, they could take on secondary meaning over time, in the course of use in the marketplace. In this way, a color could serve the chief purpose of trademarks, that of identifying the source of a particular product.
