Tuesday 9 January 2018

United States: Jury sides with San Diego in Comic Con trademark battle

Finally, the seething and slithering epic IP battle in the United States related to the ownership of the trademark ‘Comic-Con’ has come to an end with San Diego Comic Con emerging victorious. With the New Delhi Comic Con scheduled to take place later this week from December 13 to December 15, in this article, we explore the possible ramifications on the trademark front.    
  • The Plaintiff in the present case San-Diego Comic Con (hereinafter referred to as ‘SDCC’) is a non-profit corporation dedicated to the appreciation of comics and other popular arts through events, including its ‘Comic-Con convention’ in San Diego, California.
  • The Defendants in the present case, Dan Farr of Dan Farr Productions and Bryan Brandenberg, are entrepreneurs and producers of ‘Salt Lake Comic Con’, which is a comic and popular arts convention in Salt Lake City, Utah.
  • It was brought to the notice of SDCC that the Defendants, Dan Farr and Bryan Brandenberg, drove around an Audi advertising its smaller Comic Con in the midst of San Diego’s convention. SDCC sent cease-and-desist letters to the Defendant to prevent them from using the name. However, the letter was ignored by the Defendants.
  • Thus, a trademark infringement law suit was filed by the Plaintiff in 2014, against the Defendants alleging that the Defendants are using the term ‘Comic Con’ which is infringing the Plaintiff’s mark ‘Comic-Con’ and is causing confusion in the minds of the general public who as a result link both the conventions to each other.
  • Permanent Injunction forbidding the Defendants from using the infringing mark in any logo, event, trademark or website and monetary damage of $12 million dollars were prayed by the Plaintiffs against the Defendants.

  • The Defendants refuted the allegation of public confusion. They contended that the Plaintiff has abandoned the trademark. It was also emphasized by them that the trademark is generic and descriptive as it was used in some form by many similar conventions around the country for almost 50 years. As evidence, they cited examples of use of the term “comic con” to describe events that took place prior to the first San Diego event in 1970, and an instance where the Plaintiff had withdrawn its application for a trademark on the term “Comic Con” (no hyphen) in early 2000s. Talking about the generic nature of the term the Defendants also stated that Plaintiff’s trademark applied only to “Comic-Con” (with a hyphen).
  • Defending the claim of the trademark being generic, the Defendant stated that ‘there is no evidence submitted regarding the primary significance of SDCC’s trademarks in the mind of the relevant public and thus, as a matter of law, cannot establish that the marks are generic’.
  • It was contended by the Plaintiff that ‘Comic Con’ is a brand, in the sense that, people associate the name specifically to the San Diego show. They provided the Court with a survey in support of the contention where 82 percent of participants understood Comic-Con to be a brand name, and not a common generic name.
  • Even though the survey was questioned by the Defendants, however, the jury accepted the evidence. 

  • The jury found the mark of the Plaintiff to be valid and also found similarity between the two marks. It came to the conclusion that the Defendants were using the infringing mark without the permission of the Plaintiff, thereby causing confusion in the minds of public, and is therefore guilty of trademark infringement.
  • The Federal Jury awarded damages of $20,000 to the Plaintiff for corrective advertising. Also, while awarding damages the Court pointed out that the infringement was unintentional.
  • The Plaintiff was allowed to either pursue trademark licensing agreements with all the similar comic conventions in the USA, over 140 in number, or ask them to rebrand their conventions by renaming it.

The Doctrine of Genericide is important to be discussed, with the reason being that it is one of the major point of discussion in the case. Sometimes brands become a victim of their own popularity. Genericide is one such situation wherein because the usage of the trademark is to such a level that it becomes an ordinary word i.e. generic, thereby losing the trademark protection.  What exactly happens is that the mark that is once denoted for specific goods and services becomes a label for the whole group of similar goods and services. For example: ‘Aspirin’ which was once a trademark for a medicine treating headache has now lost its trademark protection because it was used so extensively  by different entities that it became a generic term for acetylsalicylic acid. A few ways to protect a trademark from becoming generic are[1]:
  • If at all a generic term forms part of the trademark, then it should always be accompanied by a distinct prefix or a suffix.
  • The trademark should always be used as an adjective and not as a noun or a verb. The trademark proprietor should always establish a proper guideline relating to the usage of the trademark.
  • Expanding business to include more than one product in the trademark. For example: ‘Band-Aid’ was initially used as a trademark only for adhesive healing bands but now they have expanded to include a line of foot care products under the same brand.
  • Educating the consumers and the employees using the trademark to ensure proper usage of the trademark is important. They should be educated regarding the fact that the trademark is used as an identifier of the goods and services and is not the goods and services itself. 
  • There should always be consistency in the usage of the mark. It should not be changed every single time it is used.
  • The trademark proprietor should always use the letters TM or ® when the mark is registered, usually on the upper right hand corner. 

In this case, the mark ‘Comic-Con’ has been made in a manner where a generic term ‘Comic’ is paired with a distinctive descriptive suffix ‘-Con’. While deciding on any trademark the Court always looks at the mark as a whole and not in parts. Thus, the Defendant’s contention of ‘the mark being generic’ is defeated. This judgement indirectly drew a line between widely accepted marks and widely used mark. The mark that becomes widely accepted would continue to enjoy trademark protection like in the present case. Whereas the mark that is widely used would ultimately become generic losing the protection.  The judgement is being looked upon as a savior for the trademarks that are on the verge of becoming generic.
The judgement is said to have huge repercussions for the event industry in the USA. The reason for this is that other similar comic conventions in the US will now have to work out a deal with San Diego Comic Con or risk rebranding their convention entirely. Rebranding could be an issue as huge an amount of time, talent and expenses are spent in branding and popularizing a convention.
In India, the application for the word ‘Comic Con’ has been filed and registered by Comic Con India Pvt. Ltd., a company incorporated in 2011. However, even though they have been granted registrations for the word, a substantial number of their applications have been objected. The said entity holds similar comic based conventions in metro cities in the country. The main edition is held annually in New Delhi and express editions are held annually in Mumbai and Bangalore. The Delhi Comic Con is round the corner. A bare perusal of the search report generated from the portal of the Indian Trademark Registry shows that neither San Diego Comic Con enjoys any trademark protection of the word Comic Con nor have they applied for it. It would be interesting to follow if in future, San Diego Comic Con decides to protect their mark in India on the basis of prior use or being well-known in the United States.

For the convenience of our readers, the following is a table listing the details of trademark applications which has ‘Comic-con’ as a substantial part of their logo in India:

[1] http://www.inta.org/Media/Documents/2012_TMUseMediaInternetPublishing.pdf

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