Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

The Ministry of Energy, Commerce and Industry of the Republic of Cyprus (“Cyprus”) lost its latest attempt to obtain trademark protection for its famous cheese, “Halloumi,” in a dated January 20, 2023. The Quebec Court of Appeal (QCCA) dismissed the appeal and agreed with the trial judge, ruling in favour of the Canadian dairy company, Saputo Produits Laitiers Canada S.E.N.C. (“Saputo”).

Halloumi, also commonly spelt as “Haloumi” or “Halomi”, is often associated with the Mediterranean island of Cyprus where it was first manufactured . It is the second most important export for Cyprus and its popularity in Canada has over the past 20 years, with many Canadian dairy manufacturers, including Saputo and President’s Choice, producing and selling halloumi cheese.

In 1995, Cyprus filed an to register “Halloumi” as a certification mark for cheese of the following defined standard: “the cheese is produced only in Cyprus using the historic method unique to that country, namely: traditionally, it has been produced from sheep's and/or goat's milk. In the case of mixtures, cow's milk is also allowed.” are a type of trademark that can be licensed to manufacturers as an indication to consumers that its products meet the owner’s defined standard. Common examples of certification marks include for Ontario wine, , and .

While this certification mark was registered in the , the Trademarks Opposition Board (TMOB) the mark on the basis that there was evidence of commercial use of “Halloumi” or similar terms in Canada already and thus, the mark is not distinctive to cheese “produced only in Cyprus.” The TMOB’s decision was upheld by both the and , with leave to the dismissed in 2012.

Cyprus entered into a with Saputo in 1999 and 2004, stipulating that Saputo “shall not use the trademark HALOMI on its products, or any other trademark confusingly similar with HALLOUMI or HALOMI.” Cyprus Saputo for breach of contract and requested a permanent injunction preventing Saputo from making further use of “Halloumi” or similar marks on its packaging. The Superior Court of Quebec ruled in favour of Saputo given that the law in Canada is settled that “Halloumi,” or similar words, could not be used as a trademark and therefore, the above contractual provision does not apply. On appeal, the QCCA agreed with the trial judge.

Canada’s rejection of trademark protection for “Halloumi” raises important questions surrounding cultural appropriation, a controversy recently brought up in the UK for the trademark “�ղ���ܱ��í��” (see ). Halloumi cheese is integral to Cyprus’ since its preparation is “directly linked to the traditional rural life and social solidarity that characterizes even today the villages of Cyprus.” However, the now widespread recognition of halloumi cheese in Canada presents a significant hurdle to Cyprus in protecting its historic cheese-making methods. To distinguish halloumi produced in Cyprus from that of Canadian retailers, Cyprus will likely need to seek a more fanciful certification mark that goes beyond the mere description of “Halloumi” (or similar terms).

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Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

In a battle of the stripes, athletic fashion giant Adidas went head-to-head with American luxury fashion brand Thom Browne in a that tested the delicate balance between protecting a company's branding and allowing for creativity and competition in the marketplace.��

At the heart of the case was Adidas' iconic three-stripe design, which the company claimed was being infringed upon by Thom Browne’s four-striped signature. The sportswear giant argued that the stripes were crucial to its brand identity and that Thom Browne's use of similar stripes would dilute the distinctiveness of its trademark and cause confusion among consumers. If successful, Adidas sought and profits earned by Browne’s use of the stripes. However, , a jury rejected Adidas’ allegations, finding no infringement or dilution.

The case can be traced back to 2005 when Browne debuted his “Three-Bar Signature” motif. This prompted Adidas to reach out to the designer in 2007, citing the similarity between the two brands’ designs. In response, Browne added another stripe to his design and launched his “Four-Bar Signature.” Adidas seemingly approved this design, as the sportswear giant stayed quiet for the next decade while Browne produced jackets, ties, socks and athletic wear bearing the Four-Bar Signature.

However, in 2018 Adidas approached Browne about his use of the stripes, claiming that they only became aware of the infringement at that time. Settlement negotiations began but ultimately fell through, and Adidas filed an .

The proceedings of the case were extensive, with both sides presenting a large amount of evidence supporting their respective positions. Adidas presented evidence of the widespread use and recognition of their three-stripe design, and survey evidence suggesting that consumers were likely to be confused by the stripes used by Thom Browne.

Thom Browne, on the other hand, argued that the decade-long delay in bringing forth an allegation was unacceptable. Furthermore, the brands served different markets; Adidas is an affordable sportswear brand, whereas Thom Browne is a high-end luxury brand not centered around sportswear. “Adidas does not own stripes,” said Robert T. Maldonade, Browne’s attorney. The jury ultimately sided with Browne’s arguments.

The trial has set an important precedent in shaping the future of trademark protection and its impact on the fashion industry. The verdict showed that the legal system recognizes the potential for stifling creativity and competition if trademark protection is extended too far, emphasizing the need for a nuanced approach that balances the interests of trademark holders and the wider creative community. The in Adidas' bid to extend its Three-Stripe trademark in 2019 further reinforced these limits, as the court ruled that the trademark lacked "distinctive character". This underscores the importance of being cautious when granting trademark protection for non-distinctive marks to ensure that it does not infringe on the creativity and competitiveness of the marketplace.

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Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On December 26, 2022, the Japanese IP High Court dismissed an appeal from Christian Louboutin (“Louboutin”), a shoe designer known for its iconic red-bottom heels, in its action against Japanese shoe designer, Eizo Collection Co., Ltd. (“Eizo”), to shut down Eizo’s use of red soles on high-heeled shoes.

In May 2019, Louboutin sued Eizo under the Unfair Competition Prevention Law, seeking a permanent injunction against Eiko’s production of red-soled high heels and damages of approximately CAD 43,500. The Tokyo District Court ruled against Louboutin by finding red soles insufficient as a source indicator, and that the likelihood of confusion among consumers is therefore low. The IP High Court affirmed the judgment and placed particular emphasis on the to assess the likelihood of confusion:

1. The relevant consumers in the Japanese shoe market (women from their 20s to 50s) are likely to try on multiple shoes before purchasing ones that fit in a physical store;
2. The market can be divided into three categories: (i) luxury brand products, (ii) affordable brand products, and (iii) inexpensive no-name products;
3. The shoes in question, as well as most high-heeled shoes, bear a brand name or logo on the insole so that consumers can distinguish between trade sources; and
4. E-commerce websites post images of ladies’ shoes and identify the trade source for the respective goods in advertisements ().

While Louboutin’s products retail for and over and fall within the luxury brand market, Eizo’s shoes occupy the affordable or no-name brand markets, with an average retail price of JPY17,000 ($130). As such, the court ruled that, despite the resemblance of the colour of Louboutin and Eiko’s outsoles, the likelihood of confusion amongst consumers is low since each company occupies a different position in the market.

Relying on the fact that Louboutin is not the exclusive supplier of red-soled high heels in Japan and only 51.6% of targeted women in their 20s to 50s residing in major Japanese cities recognized Louboutin at the sight of a red-soled high-shoe, the IP High Court Louboutin’s assertion of its remarkable reputation amongst consumers. The court also took with Louboutin’s market research. The 3,149 individuals surveyed were luxury retail shoppers and were only presented with Louboutin’s products, not Eizo’s.

This loss for Louboutin follows several years of from the Japan Patent Office (JPO) and JPO Appeal Board to register its trademark for a colour mark consisting of a red (Pantone 18-1663TP) coloured in soles for use in high heels filed on April 1, 2015 (TM App no. ). In April 2015, Japan opened the gate for non-traditional trademarks, including colour, sound, and motion . As of November 2020, however, the JPO only registered out of 543 applications for colour marks. The JPO based on Article 3(1)(iii) of the Japan Trademark Law, stating that Louboutin’s colour mark lacks distinctiveness to be deemed as an indicator of source for Louboutin in the Japanese market.

(Alt Text: EIZO shoes with red soles; Source: ()

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Mariela Gutierrez Olivares is a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s IP Intensive Program.

Controversy ensued when a Mexican food restaurant in the UK, �ղ���ܱ��í��, issued a ��to a similar restaurant, Sonora �ղ���ܱ��í��, for infringement of their registered mark "Taqueria." Yet is Spanish for a place where tacos are sold. Trademarking is akin to trademarking "pizzeria" or "café."

Across social media platforms, what they perceived as an act of�������� (owned by �ղ���ܱ��í�� Worldwide "TW"). A group called MexiBrit even launched which has collected over 100,000 signatures to date, hailing, "The Mexican UK community is outraged and we won't stop until we see justice. Stop the cultural appropriation!"��However, Sonora �ղ���ܱ��í�� is not the first business TW's trademark is enforced against. In 2020, TW of their mark and successfully opposed a competitor’s mark, "Taco Ria" claiming it was "visually similar and phonetically and conceptually identical" and would confuse consumers.

Conflicts surrounding��marks that many consider generic, descriptive or worse culturally appropriating (or misappropriating) are . The recent �ٲ���ܱ��í�� highlights the following issues in the global trademarks (and IP) regime:

1. The role of trademark examiners interpreting the statutes that grant trademark rights is increasingly challenging in a global economy.��In cases like the one here, trademark examiners and officers consider the average consumer's knowledge in the jurisdiction they are acting. Here, a trademark examiner would examine the understanding of the UK public when reviewing the "Taqueria" mark. Presumably, when it was granted in 2004, the mark was not considered generic or descriptive.
2. The use of generic and descriptive marks will inevitably cause harm.��Owners who invest resources to build a reputation suffer when they have to discontinue use of a mark. Inversely, non-owner users who become excluded from using a term where no other exists also suffer. Here, TW could choose to surrender its mark, but not without facing a considerable financial setback – forfeiting the investment made to build its name and re-distinguishing its business under a new name. Sonora �ղ���ܱ��í�� and others who wish to defend their use of the mark must also spend their resources and potentially face more significant losses if those actions fail.
3. Protecting traditional and cultural heritage requires adequate legal tools.��Whether "Taqueria" ought to remain a generic term available for anyone to use in their business name is a legal question. Though various have called for the , legal tools to determine how such protection is to be accomplished are lacking. Despite the moral reprehension associated with , legally-binding solutions are few and far between, left to each jurisdiction.

Trademarks indicate the source of a product or service. Where intellectual property rights (including trademarks) exist, accusations of cultural appropriation are insufficient to cancel or invalidate those rights. All things considered, more �ٲ���ܱ��í��s means more tacos and that is a great problem for the UK and the world to solve.

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Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.

Imagine a Birkin bag – an iconic, timeless piece that arguably embodies luxury. Now make it digital, cover it in fur and sell it as a non-fungible token (NFT) called “MetaBirkin” for at least (about $6900 Canadian). Does this count as an artistic expression protected under First Amendment rights of expression and speech, or is it a trademark infringement upon a beloved fashion icon? This is the issue at the core of the ongoing lawsuit.

Brief Timeline of the Lawsuit

January 14^th, 2022 – Hermès files a complaint

Catching wind of the furry MetaBirkin NFTs, Hermès filed a trademark infringement and dilution lawsuit against Mason Rothschild, the creator. In their , Hermès claims that the label “MetaBirkin” infringes upon their “BIRKIN” trademark and likely causes confusion in the minds of consumers that Rothschild’s products were “authorized, sponsored, or approved by Hermès.” Further details about this initial action can be found in our earlier article .

February 9^th, 2022 – Rothschild files motion to dismiss the action

Legal counsel for Rothschild maintained that the NFTs constituted protected expression under the test set out in , which held that the use of a famous trademark is protected from trademark infringement if 1) the name is “minimally artistically relevant” to the product and 2) that the use of the trademark does not explicitly mislead consumers as to source or content of the product.

Regarding the first prong, that the term “MetaBirkin” was minimally artistically relevant to his project of questioning the nature of luxury and value and bringing awareness to the prevalence of animal cruelty in the fashion industry. Regarding the second prong, Rothschild’s counsel pointed to the lack of explicit mention of Hermès in the advertising of the NFTs. Rothschild’s counsel further argued that the First Amendment right of speech and expression outweighs the “slight risk” of consumer confusion.

that Rothschild’s usage of “MetaBirkin” was akin to a trademark, namely to “brand a product line, and to attract public attention and signify source.” This form of use is outside the scope of First Amendment protection, making the Rogers test inapplicable.

May 18^th, 2022 – Judge Radkoff denies Rothschild’s motion to dismiss

Judge Radkoff found that the Rogers test applied because the . Judge Radkoff that “[because] NFTs are simply code pointing to where a digital image is located and authenticating the image, using NFTs to authenticate an image and allow for tradeable subsequent resale and transfer does not make the image a commodity without First Amendment protection.”

However, the motion was ultimately denied because the Hermès had filed adequate evidence (such as Rothschild’s statements in public interviews) to support the allegation that the label was artistically relevant and explicitly misleading to consumers. Rothschild appealed this decision, which was subsequently

October 8^th, 2022 – Hermès files a motion for summary judgement

In a newly filed motion, the instead of the Rogers test, which asks: 1) whether the plaintiff’s mark (“BIRKIN”) is entitled to protection and 2) whether the defendant’s use of the mark (“MetaBirkin”) is likely to cause consumer confusion. Hermès argues that Gruner is the appropriate test given the recent development of “undisputable facts” that pushes the First Amendment considerations out of the question.

The facts that Hermès points to include: the similarity between the parties’ marks, evidence of actual confusion amongst consumers, and the fact that both parties are selling the same product, albeit in different universes. Counsel for Hermès claims that a summary judgment on the action should be granted due to the clear and undisputed nature of the material facts.

The Big Picture

All eyes are on the court as they navigate this new digital terrain and attempt to balance the freedom rights of creators against the IP rights of consumer brands. As Mr. Dan Bereskin emphasized in his , an IP owner’s rights should not go unchecked for fear of imposing a “chilling effect” on artists’ creative freedoms. On the other hand, the metaverse presents a new avenue for trademark infringement that is difficult to police, given the ever-evolving digital landscape. Hopefully, the continuing battle between Hermès and Rothschild will provide some guidance about the legal relationship between brands and creators in this new digital world.

The post Trademark Law Moves Online: “MetaBirkin” Updates appeared first on IPOsgoode.

Serena Nath is an IPilogue Writer and a 2L JD candidate at Osgoode Hall Law School.

Known for its cheap and trendy clothes, Chinese fast-fashion retailer Shein has seen great success over the past several years. Its low prices are typically attributed to its frequent and large-scale productions, but another reason for such low pricess may be intellectual property theft. Recently, . Artist Magdalena Mollman, also known professionally as Maggie Stephenson, filed a lawsuit in the U.S. District Court, Central District of California, on June 15 suing Shein for over $100 million in damages for unauthorized reproductions of her artwork “One is good, more is better.”

Mollman versus Shein

In 2019, with the U.S. Copyright Office and included Copyright Management Information (CMI) on her artwork. To obtain intellectual property protection, is common, as it allows for one to bring a lawsuit for infringement of a U.S. work, while also allowing for one to have their copyright on the public record and a certificate of registration. However, by also including on her work, Mollman acquired further IP protection for her artwork, as CMI is information about a copyrighted work, such as the terms and conditions for use of the work, the owner’s name, and the name of the work.

With copyright protections in place for Mollman’s art, she was able to control who produced replicates and sold her work. This including , such as Sephora, Urban Outfitters, and Elle Magazine to sell prints of art at differing prices, with the lowest price being $19. However, Mollman had not authorized Shein to sell prints of her artwork. Despite the lack of authorization, from 2019 to 2021, for as low as $4 per print, and with intentional removal of Mollman’s CMI, including her name and signature. Additionally, Shein reportedly added false CMI by featuring their own brand and logo in their reproduction of Mollman’s artwork which implied that Shein is the rightful author and copyright owner. As a result, for copyright infringement, vicarious and/or contributory copyright infringement, removal of copyright management information, and false copyright management information.

Intellectual Property Theft is Common for Shein

This lawsuit is simply the latest that Shein has faced since rising to popularity. Shein has a long history of being sued for IP infringement — a source even claimed that Shein’s parent company, Zoetop Business Co., has been named a defendant in at least 50 federal lawsuits in the U.S. for IP infringement. to steal their designs, and in doing so, was able to keep product prices low by spending very little on designing their products. Additionally, these smaller businesses would be less likely to bring an action due to a lack of financial resources. when Tiina Menzel, a German-based artist, discovered that Shein had been selling products with her art, she was unable to bring a lawsuit due to costs.

Interestingly, Shein has also been known to steal IP from larger businesses too, such as Dr. Marten, Levi Strauss, and Ralph Lauren. , streetwear brand Stussy Inc. sued Shein for copyright infringement, claiming that Shein was selling products using Stussy’s logo without authorization.

Fast-Fashion Drives Intellectual Property Theft

Shein’s latest lawsuit highlights the ongoing issue of IP theft in the fashion industry. IP from smaller companies/artists is frequently exploited by large fast-fashion companies, allowing them to mass-produce trendy products at a low cost, without consequence, for smaller artists typically lack the resources to legally battle large fast-fashion companies. ��T . There must, then, be alternative legal solutions to protect small businesses from intellectual property theft, such as a sort of government-funded civil legal system. Without an adequate solution, Shein and other fast-fashion companies can continue to exploit small businesses with few consequences.

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Sally Yoon is an IPilogue Writer, IP Innovation Clinic Fellow, and a 3L JD Candidate at Osgoode Hall Law School.

How similar is too similar? Television producers need to be careful to ensure that they are not mimicking real-life businesses too closely to offer their fictitious shows some realism. According to , AMC Networks and Sony Pictures, the production companies behind Better Call Saul, are being sued for trademark and trade dress infringement by Liberty Tax. The tax company claims that the producers and film studios “decided not to be original at all” and “rip off” of its trademark which has been in use for over 25 years.

The episode in question (Season 6, Episode 2) portrays a business called “Sweet Liberty Tax Services,” shown below. The fictitious business is run by Betsy and Craig Kettleman, who embezzle money by taking advantage of their clients who do not understand the tax system. The real-life tax company "Liberty Tax" claims that the show copied its logo and style, including the Statue of Liberty, which is a frequent identifier of the company.

Photo retrieved from The Wrap

The is no stranger to trademark infringement issues.��Audiovisual professionals know to be especially careful whenever trademarks are displayed on screens. However, production teams can defend their works against claims of trademark infringement. Among these avenues are demonstrating that the trademarks are being used in an “indicative manner” or a “mere accessory,” instead of for identifying goods and services. Camerawork plays an important role in achieving that the trademarks blend into the scene’s overall ambience. For example, to mitigate trademark infringement risks, directors may take active measures to prevent fixed close-ups or give too much screen time to one particular trademark over another.

All that said, a trademark does not necessarily have to be displayed visually to trigger a trademark infringement lawsuit. After the release of “Black Mirror: Bandersnatch” in 2018, , a children’s book publisher known for their ‘game books’ titled Choose Your Own Adventure. As an interactive film, Bandersnatch viewers could take control and make decision for the protagonist, Stefan Butler, as he navigates a series of disturbing events. By adopting the unique narrative structure of its books and using the specific phrase “Choose Your Own Adventure Book,” Chooseco accused Netflix of willfully infringing its trademark and ultimately tarnishing the series’ child-friendly reputation. Netflix eventually settled with Chooseco in late 2020 after unsuccessfully arguing on grounds related to trademark law and fair use allowances.��

Moreover, in 2020, Netflix's movie "Enola Homes" was the by the estate of Sir Arthur Conan Doyle over “similarities to existing Sherlock Holmes material.” The estate argued that the film depicted a version of Holmes that was not yet in the public domain, illustrating how IP infringement issues can arise when films are based on works still under copyright protection.

Liberty Tax’s recent lawsuit shows that minor alterations to fictitious names may not be enough to bypass trademark infringement issues – not so “sweet” anymore for the “Better Call Saul” team.

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Photo by NordWood Themes ()

Tianchu Gao is an IPilogue Writer and a 1L JD Candidate at Osgoode Hall Law School.

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If you see an alternative for your favoured product—with similar quality and even cheaper prices—in a grocery store, would you consider trying it?

is an effective marketing technique, in which a company’s product or service is compared to its competitor’s. Consumers are more willing to try out new things if they are assured that the new product is comparable or superior to those made by well-known brands. Companies sometimes enhance their credibility by including that supports the comparisons in their ads. This provides consumers with more information and allows small businesses to compete with mega corporations.

Despite these advantages, comparative advertising is a dangerous field to navigate from a legal perspective. Companies that include other companies’ trademarks or products in their own advertisements are subject to from the Trademarks Act, Copyright Act, Competition Act, tort law, and the Canadian Code of Advertising Standards.

In 2019, Quebec wine producer Société de Vin Internationale Ltée (“SVI”) faced a copyright and trademark infringement claim raised by its competitor, Constellation Brands U.S. Operations (“Constellation”). In the leaflet SVI designed to promote its new product ‘Apollo Découvertes’, images of wine bottles manufactured by Constellation, as well as its registered “MEIOMI” trademark, stand alongside images of SVI’S wines. Beside the images are statements that claim the SVI wines are comparable to those from Constellation in terms of taste. Constellation brought an action against SVI based on copyright and trademark infringements and wanted to recover lost profits as calculated from SVI’S Apollo Découvertes wine sales.

One of the provisions that governs the use of third-party trademarks from Trademark Act is section 22: “[n]o person shall use a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.” The term “” encompasses all the intangible assets of a business. In the context of trademarks, it refers to the recognition and trust that consumers have with a particular brand.

This section, upon first look, may appear to be a catch-all prohibition of any use of competitor’s registered trademarks in a comparative ad. Yet, judicial interpretation of this section has effectively limited its applicability. Referencing the American Trademark Act (Lanham Act), the Supreme Court of Canada confined the use of section 22 to cases “in which the protectable interest is clear and the threat of interference is substantial” (, 2006 SCC 23). A review of the case law reveals that courts rarely prohibit the use of marks for goods or wares in comparative ads. In contrast, section 22 is more applicable to trademarks for . Therefore, it is unsurprising that both the trial and the courts denied Constellation’s claim for trademark and copyright infringements.

The result of the case indicates that the protection and benefits granted by the Trademark Act are not without limits. The use of a competitor’s trademark, “for the purpose of comparing the goods with the goods of the plaintiff [para 26],” does not necessarily amount to a trademark infringement.

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Photo from Nike

Alexandria Lewis & Ian Rothweiler are JD Candidates at Southwestern Law School. This article was originally written as a requirement for Victoria Burke and John Begakis’ course on Fashion Law.

Trademark Infringement / Anti-Dilution – Nike v Warren Lotas

Warren Lotas partnered with Jeff Staple to "reinterpret" Staple’s original 2005 collaboration with Nike on the classic Nike Dunk shoe. Nike wasted no time and quickly filed a trademark infringement and anti-dilution lawsuit. The shoes and respective trade dress were nearly identical replicas of the original Dunks, so Nike had a strong case that the Lotas shoes were likely to confuse the general public as to their origin, source, sponsorship, or affiliation with Nike.

As a defense to the trade dress rights infringement claims, Lotas claimed that the tread on the sole of the shoes served a utilitarian function because they are essential to their use and purpose, and thus the quality of the sole.

Staple, who has a history of working for Nike and is the registered owner of the Staple Pigeon brand (seen on Lotas shoes), was left out of the litigation between Nike and Lotas. This is strange, as he was a co-partner in the Lotas product and his trademark pigeon is part of the trade dress of the allegedly infringing shoe. Lotas effectively received constructive approval from Staple to go forward with the Dunk lookalike.

Not only was Nike seeking injunctive relief to enjoin Lotas from selling the allegedly infringing sneakers, but also monetary damages. It is hard to imagine that the existence of these sneakers will damage Nike’s brand (worth $160 billion) enough to warrant monetary damages. The unfortunate reality for Lotas is that Nike has unlimited resources to take on nonstop litigation against designers, manufacturers, and distributors to protect their trademarks. This creates a chilling effect that moves up the supply chain, instilling fear of a pending Nike lawsuit among all involved parties. If trademark law ultimately serves to protect the consumer, do these disputes really put the consumer at risk or is Nike just flexing their muscles and depriving many would-be purchasers of new and potentially more appealing designs because they can?

Photo from MSCHF

Trademark Infringement - Nike v MSCHF

MSCHF, the Brooklyn-based art collective known for distorting the look and feel of well-known products and services, employs several risqué and even arbitrary design methods. Just look at its squeaking rubber chicken bong and YouTube channel presenting videos of a vat of mayo or a photograph of Pete Davidson. Needless to say, MSCHF reimagines popular items and brands to offend more conservative sensibilities.

In early 2021, MSCHF leaned into its disruptive attitude by collaborating with rapper Lil Nas X to craft 666 pairs of Nike Air Max 97 shoes with a Satan-themed twist. The expensive sneakers featured an inverted cross and a bronze pentagram charm embossed with “LUKE 10:18”, a Bible verse which reads “I saw Satan fall like lightning from heaven”. The design model was thought up to promote the Old Town Road artist’s devil-themed music video, Montero (Call Me by Your Name), as well as to increase awareness about MSCHF’s wicked genius.

Most Nike enthusiasts were bummed when the shoes sold out within 60 seconds. Religious or spiritual beliefs aside, so-called “sneaker heads” wanted a pair of rare 97s containing a drop of human blood in the sole.

While progressive critics praised MSCHF’s devilish design, Nike sued MSCHF for trademark infringement. Nike alleged confusion and deception surrounding the shoes’ source because MSCHF’s use of the iconic Nike swoosh implied authorization. Nike also alleged dilution by trademark tarnishment, as enraged customers boycotted original Nike products, hurting their pockets and long-held goodwill with consumers.

Nike obtained a permanent injunction order restricting MSCHF’s production, promotion, and sale of ‘Satan Shoes’. Nike also ordered all attorney fees and profits collected from shoe sales, reaping all the benefits of MSCHF’s creative, albeit mischievous work.

Unsurprisingly, Nike didn’t react with the same disapproval toward MSCHF’s ‘Jesus Shoes’ which had dropped earlier. Celebrities as well-known as Drake sported them. This seems to be due to Christian imagery not holding the stigma that Satanist imagery does today. Nike seems to sue for trademark infringement subject to society’s tolerance of alternative views, and MSCHF exists to push our boundaries.

The post A Brief Recent History of Nike’s Trademark Battles appeared first on IPOsgoode.

Photo Credit: (Unsplash.com)

Shawn Dhue is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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In light of Red Bull GmbH's (Red Bull) recent in the High Court of New Delhi, I thought it would be interesting to examine the famous energy drink company’s numerous past trademark disputes. The iconic logo, which features a blue and silver background with two red bulls about to collide over a bright yellow sun, has been at the centre of controversy since the artwork was created in . Red Bull has done a great job of making sure that people do not profit from similarities in the logo and its name. Registering trademarks is helpful in many circumstances, such as preventing other businesses from profiting off of consumers mistaking their products with those of a famous brand. .

Although the dispute never went to trial, Red Bull asked a small Norfolk micro brewery, Redwell, to change its name. Threatening legal action, Red Bull told the eight-person employed brewery that their name would ruin Red Bull’s reputation. Although similar in name, Redwell says their name came from Redwell Street in Norwich. Red Bull's leading argument was that Redwell was similar to Red Bull in look and sound. Therefore, consumers could be convinced Redwell’s products belonged to Red Bull.

Redwell explained the difference in name, branding, product, and goals of the brewery. None of their objectives were in line with Red Bull’s legacy. After reaching a settlement, a spokesperson for Red Bull claimed that there was . Red Bull was willing to allow Redwell to continue to use its name so long as it was solely for beer and not energy drinks. Redwell said that it never has and never will cross over from beer to energy drinks, and therefore is happy with the private settlement.

(Photo Credit:

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In this recent case, Red Bull sued three defendants for similarities of their Big Horn logo. The logo featured two rams about to butt heads over a yellow sun on a blue and silver can. However, when Red Bull brought the allegation against the defendants for their failure to comply with the , two of the three defendants stated that they did not see the alleged similarities.

Pursuant to Article 9(2)(c) of the EU Trade Marks Regulation, the onus was on Red Bull to prove that their logo was widely recognized. The judge in this case, ruled that Big Horn would undoubtedly profit from Red Bull's reputation and recognized label given the similarities between the two logos. The judgment also came after two of the three defendants admitted that Red Bull's logo was a popular label and that they knew about it for years. This unfair advantage would be due to "a likelihood of confusion," which is essential in establishing a trademark infringement under article 9(2)(b) of the EU Trade Marks Regulation.

(Photo Credit: https://www.barandbench.com/news/litigation/delhi-high-court-restrains-use-red-horse-mark-trademark-suit-by-red-bull)��

Red Bull seemed to have had an advantage in this case. India’s Trade Marks Registry lists the name “Red Bull” as a well-known trademark. Moreover, the High Court of New Delhi once ruled in favour of Red Bull in . When Bakewell Biscuits released their chips “Red Horse,” described in the judgement as a "blue/silver trapezoid device and the device of two animals in charging position with a yellow backdrop/sun disk," the decision came as no surprise.

The Court found that Red Bull successfully established trademark infringement. Allowing the Red Horse logo would have enabled the defendant to profit from Red Bull's years of established goodwill. Accordingly, the Court ruled against Bakewell Biscuits’ use of the Red Horse label.

In conclusion, considering the precedents set as a result of lawsuits filed by Red Bull, designers ought to avoid combining Red Bull’s well-recognized marks in a way that would cause confusion in the average consumer’s mind. Although some companies try to get away with using Red Bull’s iconic marks, the famous energy drink company always finds a way to hold infringers accountable.

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