By: Pontus Sörlin
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No success in suing Ghost for infringement
No success in suing Ghost for infringement
The company Svensk Drama Pop AB (SDP) conducts music production through the Swedish rock group GHOST.
Since 2013, the SDP also holds the EU trademark ghost, the trademark of which – that is, the logo itself – consists of a figure with the name drawn in black and white.
The fact that they hold the EU trade mark ghost means an exclusive right to use the sign within the EU and, in certain circumstances, similar characteristics.
In addition to music, the brand is registered for several different types of merchandising products, one of which is gin.
The British company Ghost Drinks Ltd. (Ghost Drinks) manufactures, markets and sells a vodka called GHOST VODKA that has the hallmark GH-ST VODKA with a skull in the middle of the word ghost.
Furthermore, Ghost Drinks DELIVERS GHOST VODKA to Speedy Wine AB (Speedy Wine), which in turn markets and sells the drink to various subcontractors.
The SDP is of the opinion that it is thanks to the goodwill and reputation that lies in the name of the rock group that enables large-scale sales of gin under the ghost brand, among other things.
It is therefore considered that Speedy Wines’ marketing and sales under the sign GH-ST VODKA are a snuff on their good name which infringes their exclusive rights to ghost.
The SDP therefore contacts Speedy Wine with the request that they cease the use of the GH-ST sign.
The appeal is contested and the SDP is suing Ghost Drinks and Speedy Wine for trademark infringement.
Patent and Market Court
The Patent and Market Court (PMD) begins by clarifying the legal starting points applicable in the case.
Under Article 9(2)(b) of the Regulation of the European Parliament and of the Council on EU trade marks, the SDP, as the holder of ghost, has a right to prevent the use of characteristics identical to or similar to theirs.
The limit for another brand of goods to resemble ghost in an unauthorised way is that there is a risk of confusion.
The court will initially examine whether ghost has gained enhanced distinctive power – a slightly stronger and broader protection than ordinary trademark protection – through extensive use.
In order to prove that the band has strengthened its hallmark power, the SDP invokes, among other things, concert lists, lists of the number of listeners on Spotify and articles mentioning the band in the media.
In view of the evidence relied on, the Court concludes that, although the band has achieved great popularity, it is true that the band has achieved considerable popularity.
The court, on the other hand, does not see it as having shown that ghost has achieved enhanced characteristic power in relation to alcoholic beverages.
The continued starting point for PMD’s assessment of the existence of confusion is therefore that ghost has normal trademark protection for its gin.
In order to determine whether there is a risk of confusion between the trade marks, PMD is based on the similarity of the goods and the similarity of the parties’ characteristics of goods.
If the products have a similarity of goods, the similarity of the characteristics needs to be lower in order to present a likelihood of confusion.
Since both marks relate to alcoholic beverages, the Court finds that there is a similarity of goods and proceeds to examine the degree of similarity of the characteristic.
In assessing whether the average consumer would confuse the characteristics with each other, or believe that they come from the same undertaking or undertakings with an economic linkage with each other, the Court considers that they are linked to each other.
The Court states that the SDP mark is very figurative in shape and that the word ‘ghost’ can be read with some effort.
The GHOST VODKA brand has a completely ordinary font and differs significantly from the SDP brand.
The Court therefore considers that a consumer would pay attention to the differences between the two brands without a detailed examination.
Further, there is no risk that the average consumer would think that the beverages are supplied from the same company or economically linked companies.
Ghost Drinks and Speedy Wine have thus not been guilty of trademark infringement and the SDP loses the dispute.