The trade mark case of will.i.am has been in the news a lot. The case does, of course, involve William James Adams, a man who found fame and fortune with the group The Black Eyed Peas, and a man who apparently decided that his real name might work well for someone interested in running for US President, but not for someone set on becoming a rock star. The other party to the dispute is a recording artist called Pharrel Williams.
What’s happened is that will.i.am has opposed a US trade mark application filed by Pharrel Williams to register the trade mark i am OTHER. The basis of the opposition is that the trade mark i am OTHER is likely to be confused with, and also dilutes, the registered trade mark will.i.am. Pharrel Williams has apparently responded by approaching a US court for an order declaring that i am OTHER does not infringe the trade mark will.i.am.
The case throws a spotlight on some interesting aspects of trade mark law. It highlights the fact that the name of an individual (including a pseudonym) can both function as a trade mark, and be protected by way of a trade mark registration. This happens particularly in the case of celebrities, where the name of the celebrity not only identifies and distinguishes the products that the celebrity produces (for example music), but also identifies and distinguishes other products which have been endorsed by the celebrity. This trend isn’t limited to musicians of course – film stars, sportsmen and even politicians are involved in branding, usually through celebrity endorsement. A large number of celebrities have obtained trade mark registrations for their names, signatures, photos and images. Recently it was reported that Beyoncé and Jay-Z – two celebrities who understand branding very well – had applied to register the name of their child, Blue Ivy, for a range of baby products, within one month of the child’s birth. (William and Kate, if you’re reading this ...!)
The will.i.am case also highlights the issue of the likelihood of confusion, something that lies at the heart of trade mark law, which is of course all about preventing consumer confusion. The likelihood of confusion arises in the context of both trade mark infringement and oppositions to trade mark applications. When deciding whether or not there is a likelihood of confusion, there are potentially two similarities to consider. The first is the similarity of the trade marks. The second is the similarity of the products for which the one trade mark is registered and the other trade mark is being used or for which it is sought to be registered. But in many cases the products are the same, in which case the only issue is the similarity of the trade marks.
When it comes to comparing trade marks, the court considers the visual, phonetic and conceptual similarities. The court must strive to consider the issue through the eyes of the ordinary customer, who is a person of average intelligence and proper eyesight, a person who has an imperfect recollection, and a person who exercises reasonable caution. The court must bear in mind that the average consumer doesn’t always see the two trade marks side by side. The court must consider that the average consumer may remember a trade mark by its general impression or by the dominant or striking feature of the trade mark. And it will recognise that the more distinctive the earlier trade mark is, the greater the likelihood of confusion. Some real life examples - one South African court recently held that the marksZemax and Zetomax (both for pharmaceuticals) were likely to be confused, whereas another held that three-stripe (think Adidas) and four-stripe motifs, both used for shoes, were likely to be confused.
If the court does need to decide whether or not the products are similar, it will look at a number of factors: what the goods are used for; who they’re used by; what they’re made of; where and how they’re sold; who they’re sold to (discerning experts or the public at large); whether they’re regarded as competitive products; whether they complement one another. Applying these factors, a South African court recently decided that wine and grapes were not similar goods, and that the use of the identical trade mark for these goods would not cause confusion. In another case, a court held that the trade mark Due South could co-exist in the names of two different companies (one being a large retailer), because of differences between the goods and services.
Lastly the will.i.am case highlights the issue of dilution, which is the protection that well-known trade marks have against erosion, free-riding and tarnishment. This is a troubled area of trade mark law in South Africa, because several years back the Constitutional Court held that Laugh-It-Off was not guilty of tarnishing SAB’s Black Label trade mark when it brought out a spoof Black Labour t-shirt, because there was no likelihood of economic loss. This decision has put our law at odds with trade mark law in other parts of the world, where a likelihood of economic loss is not a requirement and where dilution cases do succeed from time to time, especially in the USA.
So how would will.i.am fare if his case was heard in South Africa. For the reason mentioned, dilution probably wouldn’t be raised, and the issue would simply be the likelihood of confusion. Assuming that Pharrel Williams’ interests in the trade mark i am OTHER are limited to music, it would be a simple comparison of the trade marks. Applying all the tests - imperfect recollection, dominant feature, distinctiveness - I can say without hesitation that will.i.am’s chances would be very good, well OK better than 50% , but of course one can never predict how a case will go so it’s not impossible that he might fail. What else would you expect from a lawyer!