A thought entered my mind after reading this article in this afternoon's edition of the WSJ. Looks like this could have implications over here with the dispute between Apple Computer and Apple Corps. in England. Just wondering how much of an impact it will truly have, taking into account to the degree in the English courts have discretion over this lawsuit.
Here's the piece:
Supreme Court Limits
Some Trademark Claims
By MARK H. ANDERSON
DOW JONES NEWSWIRES
December 8, 2004 11:38 a.m.
WASHINGTON -- Rejecting a ruling by a lower court, the Supreme Court Wednesday limited the circumstances under which companies with trademarked marketing terms can bar competitors from using similar words in advertisements.
The 9-0 opinion threw out a ruling by the 9th U.S. Court of Appeals in San Francisco that had made it easier for companies with trademarks to allege infringement. The case involves the niche industry of permanent makeup inks and whether one company's trademark for the term "micro color" prevents a competitor from also using the words.
Put into a broader context, the Supreme Court decision makes it harder for a company like Best Buy Co. Inc. to sue another electronics retailer for using the words "best buy" in an ad.
The Supreme Court decision, written by Justice David Souter, said a company defending itself against a trademark-infringement claim can say it fairly used the disputed terms without having to prove consumers weren't confused by those ads. The burden of proving confusion, Justice Souter said, falls on the company alleging trademark infringement. Both fair use and confusion are key components of trademark law.
"A plaintiff claiming infringement of an incontestable mark must show likelihood of consumer confusion," Justice Souter wrote. "The defendant has no independent burden to negate the likelihood of any confusion."
The Supreme Court decision favors a more narrow interpretation of trademark law held by the 2nd U.S. Circuit Court of Appeals in New York, which also handles a number of trademark cases. The case now goes back to lower courts for additional legal proceedings. (KP Permanent Make-Up Inc. v. Lasting Impression I Inc.)
Here's the piece:
Supreme Court Limits
Some Trademark Claims
By MARK H. ANDERSON
DOW JONES NEWSWIRES
December 8, 2004 11:38 a.m.
WASHINGTON -- Rejecting a ruling by a lower court, the Supreme Court Wednesday limited the circumstances under which companies with trademarked marketing terms can bar competitors from using similar words in advertisements.
The 9-0 opinion threw out a ruling by the 9th U.S. Court of Appeals in San Francisco that had made it easier for companies with trademarks to allege infringement. The case involves the niche industry of permanent makeup inks and whether one company's trademark for the term "micro color" prevents a competitor from also using the words.
Put into a broader context, the Supreme Court decision makes it harder for a company like Best Buy Co. Inc. to sue another electronics retailer for using the words "best buy" in an ad.
The Supreme Court decision, written by Justice David Souter, said a company defending itself against a trademark-infringement claim can say it fairly used the disputed terms without having to prove consumers weren't confused by those ads. The burden of proving confusion, Justice Souter said, falls on the company alleging trademark infringement. Both fair use and confusion are key components of trademark law.
"A plaintiff claiming infringement of an incontestable mark must show likelihood of consumer confusion," Justice Souter wrote. "The defendant has no independent burden to negate the likelihood of any confusion."
The Supreme Court decision favors a more narrow interpretation of trademark law held by the 2nd U.S. Circuit Court of Appeals in New York, which also handles a number of trademark cases. The case now goes back to lower courts for additional legal proceedings. (KP Permanent Make-Up Inc. v. Lasting Impression I Inc.)
