In 2017, AM General LLC known for manufacturing the military vehicle known as the Humvee, sued Activision Blizzard, Inc., citing that Activision closely copied the design of the vehicle for several issues of the popular Call of Duty video game franchise, as well for repeatedly invoking the “Humvee” trademark and utilizing the vehicle and trademarks in various promotional materials.
The defendant argued that the strong protection afforded by the First Amendment warranted the dismissal of the AM General’s claims.
In April 2020, the court found, by using the Rogers Test, that Activision Blizzard’s interest in presenting military verisimilitude easily met the low bar for artistic relevance. Furthermore, by using the Polaroid Factors the court determined that Activision Blizzard’s use of Humvees was not explicitly misleading. Although some surveys did show some potential confusion amongst users, the fact that AM General was a manufacturer of vehicles and Activision Blizzard was a producer of video games heavily weighed against such assumptions.
In summary, the Court held in its decision to grant a summary judgment to Activision Blizzard against all of AM General’s claims, that “enhancing the games’ realism” was enough to determine the use of Humvees a part of the games artistic expression.
Such a case will prove helpful to art producers from all walks of life who might want to include possibly trademarked material in attempts to more closely ground their art in reality.
In 1961, Polaroid Corporation brought suit to Polarad Electrical Corporation alleging that the use of the name Polarad as a trademark and as part of the corporate title infringed Polaroid’s federal and state trademarks and constituted a case of unfair competition. Both the lower court and the appellate court dismissed the claims citing that although the similarity was great, there was a lack of evidence of actual confusion.
From this case derived several factors for determining the likelihood of confusion known as the “Polaroid factors”.
These are some principles of the factors:
The strength of the mark: Depends on whether it has acquired secondary meaning or if it is arbitrary, fanciful, or suggestive. A weak mark will have difficulty proving the likelihood of confusion.
The similarity of the marks: Marks must be compared in their entirety, this includes appearance, sound, connotation, and commercial impression. Adding a prefix or suffix, changing a letter, or adding clarifying information may not be sufficient to avoid similarity. Similar meaning can also weigh in the decision.
The similarity of goods: The general rule is, a trademark is permitted to use a similar mark as long as it is a completely different product. The protection may also extend to related goods. Courts may also consider if the same advertising and distribution channels are used.
The degree of care by the consumer: Depending on the products and their target demographic more or less evidence might be required to show a likelihood of confusion. Expensive products or those targeted to professionals have a higher similarity threshold because their consumers use an excessively higher degree of care. Cheaper products that may be bought on impulse may more easily confuse an ordinary purchaser, therefore less similarity may be necessary to prove a likelihood of confusion.Read More
By Moeller IP Advisors
Domain Names and Trademark
Do you want to know what to do if someone register a domain name using a small variation of your trademark? Keep reading.
In the mid-1990s and early 2000s, Brazil was overwhelmed by what commentators described as a real “avalanche” of cybersquatting cases: thousands of domain names were registered using a small variation of a trademark name, in order to mislead consumers and divert traffic away from the legitimate websites. The relative facility with which second-level domain names could be registered in Brazil and the abundance of second-level domain names choices increased the phenomenon. In the latest years, the Brazilian legal system has evolved in order to acknowledge cybersquatting as a serious legal infringement and anti-competitive conduct, and has equipped itself with a series of instruments aimed at protecting trademark owners’ rights.
If you need a trademark attorney contact us. At Moeller IP we have trademark attorneys with years of experience.
Registration of ‘.br’ domains: priority to trademark owners
Since 1995 Registro.br, is the entity which is responsible for registering .br domain names in Brazil acting as the official registrar.
Registro.br cannot prevent the registration of a domain name which is identical or similar to a preexisting trademark, except in case of a well-known trademark. However, in case of frozen domains, Registro.br set up a procedure that recognizes trademark holders a priority in registration. Every few months, a list of frozen domain names is published; companies interested in one or more of the frozen domains may apply for registration within a period of approximately 15 days. If more than one subject applies for the same domain name, registration will be granted to the trademark owner, that has to prove their legitimate interest through a certificate issued by the PTO.
In 2010, the Brazilian Network Information Center – NIC.br, established an Administrative Dispute Resolution Proceeding for .br domain names, also known as SACI-Adm. According to the SACI-Adm, in case of supposed infringement, the trademark owner has the option to refer to an arbitration panel. Claims must regard domain names which are identical or similar to trademark previously applied for or registered before the Brazilian PTO; famous trademarks even if not applied for or registered in Brazil; or trade names, civil names, family names, pseudonyms or well-known nicknames, over which the claimant has a prior right. The procedure lasts for 90 days with the possibility of extensions – which cannot total more than 12 months. The claimant should also demonstrate that the registrant does not have a legitimate interest in the domain name or that it was registered in bad faith.
The procedure constitutes a real improvement as it allows a quicker and cheaper dispute resolution if compared to the traditional civil proceedings.
Finally, the Courts also showed to be particularly receptive to the issues of the trademark owners. In the Eurotent case, in 2002, the 17th Court of Appeals of Rio de Janeiro State Court established that both trade names and trademarks should be protected against domain names capable of misleading consumers or creating confusion and ordered to cancel the registration of the disputed domain name, assigning its rights to the trademark owner. In 2007, the Sixth Court of Appeals of the State Court of Rio Grande do Sul granted a preliminary injunction to prevent the use of a domain name that could have been confused with a previously registered trademark. Several other decisions have subsequently confirmed this case law, supporting an orientation that favours trademark owners.