What is peculiar about this headline, is that both these companies, Honda Motor Co. Ltd. (“Honda”) and Microsoft Corporation. (“Microsoft”) are well known international brands. Most consumers are aware of the sectors in which these brands function. While Microsoft, since its establishment, is engaged in the business of computers and software, Honda is prevalent in the automobile industry. Therefore, one may wonder, what could possibly have happened for these 2 brands to crossover in a trademark dispute. Read along to find out:
On August 31, 2020, Honda filed an Opposition against Microsoft’s trademark application for the mark “POWER YOUR DREAMS” at the United States Patent and Trademark Office (USPTO) before The Trademark Trial and Appeal Board (US TTAB). Microsoft applied for registration of the mark in Class 28 with respect to, inter alia, video game consoles. Honda, on the other hand, is the owner of the mark “THE POWER OF DREAMS”, inter alia, in Classes 07 and 12. Honda contended that it had started using the tagline as a part of its primary branding activities and it is now used in almost all promotional and advertisement content. It stated that the tagline is exclusively associated with Honda.
The twist in the matter lies in the fact that Honda and Microsoft have already entered into a license agreement whereby Honda allows Microsoft to use its mark in the video game’s graphics.
Image source: Notice of Opposition filed by Honda. We do not claim any copyright in the image and the same is used for representational and academic purposes only
Honda is therefore apprehensive that in addition to the licensed mark, if Microsoft also adopts a deceptively similar tagline- POWER YOUR DREAMS, is likely to make a user recall HONDA’s mark and result in dilution of its trademark “THE POWER OF DREAMS”. Hence, the opposition.
The key takeaway from this trademark dispute is that, while entering into licensing agreements or any agreement allowing use or sharing of trademarks/ designs/ copyright etc. the licensor should safeguard its intellectual property rights and have reasonably restrictive covenants to prevent the licensee/ subsequent user from using its IP and/or IP that is deceptively similar to its IP. Parties sharing or using the same intellectual property, must ensure that consumers are pointed to the accurate source of such IP, be it the licensee or the actual proprietor.