Trade Marks for beginners
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In the last few days, Lady Gaga has been hit with a $100 million trade mark infringement claim filed by California-based surf brand Lost International.
Lost has a US trade mark, which was registered in 2015, and they have claimed that Gaga’s use of the word ‘Mayhem’ infringes their registered trade mark. This is a word mark registration, which can be enforced against other parties making unauthorised use of an identical or similar word, for similar or identical goods and services, irrespective of style.
Lost has also claimed that the stylisation adopted in some of Gaga’s ‘Mayhem’ designs, which feature on her album cover and merchandise, is almost identical to that featured in their own logo:
Source (from product listing): https://www.ladygaga.com/us-en/shop/products/mayhem-orange-logo-hoodie?Size=M
Source (from product listing): https://lostenterprises.com/products/mayhem-bolts-heavy-hoodie-vintage-black?variant=45771646271724
This case raises some important issues for brand owners.
First, there are limitations to consider when using a stylised word as a logo. While stylisation does add a level of distinctive character to a word, stylistic elements such as font, style, size, and composition are limited by the need to make the word legible and attractive. Furthermore, certain words evoke certain styles in the mind and may influence, or indeed limit, design choices. This arguably increases the chance of another party choosing a similar style of logo, whether intentionally, or not.
Musicians and bands using merchandise to promote their name, or the name of an album or tour, is nothing new. It can be a valuable income generator for both the artists themselves, and third parties. Trade mark owners can license their trade marks to third parties to manufacture and sell merchandise featuring their mark, usually in exchange for a licence fee, royalties, and / or a percentage of profits.
However, there has been much legal debate over the years around the use of trade marks on promotional products and merchandise and whether, and in what circumstances, it can be considered ‘genuine use in commerce’. This is a complicated and nuanced point of law, and its application in practice varies between jurisdictions.
In this case, there is likely to be much discussion on whether Gaga is making genuine commercial use of the word ‘Mayhem’ in respect of clothing, or if the use on merchandise is simply to promote her album and tour of the same name. The former would arguably indicate that trade mark infringement has occurred, whereas the latter would make this claim far more challenging to prove.
Expect Poker Faces and Paparazzi galore as this legal Mayhem unfolds…
Author: Fiona Jones
For further advice, please contact the trade marks team at Hindles.