The news that the company founded by Ben Cohen and Jerry Greenfield, Ben & Jerry’s, has sued a company called Caballero in the USA for trade mark infringement (an interim interdict has already been granted) has caused considerable amusement. Ben & Jerry’s, of course, sells a wide range of wonderful ice creams, and many of the company’s individual product names have been registered. Names like Cherry Garcia, Boston Cream Pie, Peanut Butter Cups, New York Super Fudge Chunk, Chocolate Fudge Brownie and Coconut Seven Layer Bar. Caballero’s business is rather less wholesome - it produces porn movies under the name Ben & Cherry. Popular titles include Hairy Garcia, Boston Cream Thighs, Peanut Butter D-Cups, New York Fat & Chunky, Chocolate Fudge Babe and Coconut 7 Lay-Her Bar. You can see why the ice-cream makers were miffed, especially as Caballero also uses imagery used by them, like grassy fields and puffy clouds. But, as some have pointed out, Ben & Jerry’s hasn’t been above using the odd risqué name or phrase itself - examples include the product names Karamel Sutra and Schweddy Balls, and the taglines Size Matters and Wanna Spoon.
Having your brand hijacked by a porn company is, of course, no laughing matter. It’s something that quite a few big companies had to deal with in the early days on the Internet, when famous trade marks were registered as domain names and directed at porn sites – for obvious reasons, Richard Branson’s Virgin had some problems in this regard. But there have long been procedures in place to get domain names that were registered in bad faith, or that are deemed to be ‘abusive’, returned to their rightful owners. So the domain name issue is no longer that important.
So what grounds do you have for complaining if someone uses your brand name in relation to porn? It may not be easy, but it’s most likely that you will want to bring a case of what’s loosely known as trade mark infringement by dilution. This is the form of infringement that allows the owner of a registered trade mark that has a reputation to stop another company using that trade mark, or something very similar, if that use takes ‘unfair advantage of’, or is ‘detrimental to the distinctive character or repute of’, the registered trade mark, even if there is no confusion at all. Its purpose was well understood by the South African judge who said this of dilution: if a butcher in a Free State dorp calls his business Rolls Royce Butchers, no one will be under the illusion that there is any connection with the motor company, yet the name will be eroded. It’s well accepted that this form of infringement deals not only with dilution (erosion or blurring), but also tarnishment (harm to reputation). In some cases, the company may feel that there is both dilution and tarnishment, as the credit card company may have done when a condom company decided to call its product Visa.
But the courts have struggled with the concept of dilution. There are lawyers who believe that in South Africa the concept’s been dead in the water ever since the famous case involving SAB and Justin Nurse’s firm, Laugh-It-Off Promotions. In that case SAB, owner of the Black Label brand in South Africa, tried to stop Laugh-It-Off from using a logo that resembled the Black Label logo, together with wording that commented on the company’s perceived labour practices, like ‘Black Labour - White Guilt.’ The Constitutional Court, which eventually decided the matter, held that there was no infringement because there was no likelihood of economic loss, something that may be difficult to establish in many dilution cases.
In Europe the law is also quite confused. In one case involving Intel, Europe’s highest court ruled that to prove dilution you need to show that the alleged dilution has led to some change in economic behaviour on the part of consumers. In a later case involving L’Oreal, the same court held that there will be dilution if you can show that the alleged infringer gained some commercial advantage from its action. And in a very recent case it held that a trade mark registration for Botox for pharmaceuticals was diluted when two different companies tried to register the marks Botocyl and Botolist - the court was not unmoved by the fact that both companies admitted that, although their products did not include the active ingredient of Botox (botulinum toxin), they had chosen their names to take advantage of the image associated with Botox. In the USA, on the other hand, the law was recently amended to provide that a mere likelihood of dilution - regardless of actual or likely confusion or economic injury - will suffice.
So dilution is not without its difficulties. You might therefore also want to claim that the porn merchant is committing the more traditional form of trade mark infringement, namely infringement based on confusion. The test in such a case is this: bearing in mind the similarities between the marks and similarities between the products of the two companies, is there a likelihood of consumer confusion, in other words a likelihood that consumers will wonder whether the products come from the same source? When making this enquiry the judge will try to wear the hat of an ordinary consumer, and bear in mind that the average consumer has imperfect recollection, does not see trade marks side by side, and is most likely to remember the distinctive and dominant feature of a mark. The judge will also take an overall view of the matter, and consider that a lesser degree of similarity between the products may be offset by a greater degree of similarity between the trade marks, and vice versa. So even if your business is far removed from porn - and I have no doubt that it is - the fact that your name is distinctive and the porn merchant’s name is identical or near- identical to yours may be enough to establish that there is an infringement based on confusion. But here’s hoping that you never ever have to worry about this!