Help I need some-I.P.
Friday 29th September 2017
When the world gives you lemons…
A Polish drinks company has been forced into a rebranding exercise after Yoko Ono challenged their “John Lemon” beverage on the basis that it infringed the trademark and personal rights of John Lennon, her late husband.
An advertisement appeared on the social media page of John Lemon Ireland, and featured a mural of the musician holding lemons accompanied by the company’s logo. Ono argued this showed that the company was “abusing and misusing the legacy of John Lennon”. Another advert contained John Lennon’s distinctive round glasses, coupled with phrases such as “Let It Be”.
Trademarks are signs that are capable of distinguishing goods and services. They are defined widely by the Trade Marks Act 1994 (the Act) and may be a host of different objects, including words, designs, smells, or in the present case, a personal name.
By registering a trademark it is possible for the holder to prevent the use of the mark, or a mark that is “confusingly similar to it” by others. They allow customers to identify a brand, and encapsulate the value of that brand for the benefit of their holder.
While this matter did not proceed to court, litigation for infringement may have involved a claim under s10(2) of the Act that John Lemon was similar to the John Lennon trademark, and was used in relation to goods either identical or similar to those for which the trademark is registered. When registered in 2016, the John Lennon trademark covered ‘lemonades’ and ‘syrups for lemonades’.
For their part, the drinks company denied the breach. They pointed to the John Lemon European trademark having been registered in 2014, two years prior to Yoko Ono registering John Lennon.
In the possible absence of an infringement claim, the tort of passing off may have proven a more fruitful avenue for Ono. Broadly speaking this is a sort of unfair competition. Defined by the ‘classic trinity’ it occurs when, for example, Trader B acquires goodwill or reputation. If Trader A then makes a misrepresentation leading to confusion that allows Trader A to benefit from Trader B’s goodwill, and this causes damage to Trader B, Trader A is guilty of passing off. The three elements are therefore: goodwill, misrepresentation, and damage.
In the present case, goodwill could have been the sense of reputation acquired by the personality and legacy of John Lennon. Misrepresentation occurred with the adverts that contained words or images either featuring, or closely associated with, the artist. This would likely have formed an actionable misrepresentation by either merchandising or endorsement. Once misrepresentation has been established it is fairly easy to establish damages. Even if no actual damages had been suffered (there do not seem to be many John Lennon endorsed soft drinks currently on market), injurious association or loss of reputation will often be sufficient.
In the face of a potentially costly legal battle the company settled, noting “we couldn’t take on someone who is worth many, many millions.” The company will sell off its remaining John Lemon stock by the end of October and will thereafter be known as “On Lemon”.
Commentary on this story has unsurprisingly noted the David and Goliath nature of the dispute, with many siding with our saccharine David. However, Ono was within her rights as executor of Lennon’s estate (including any image rights and trade marks) to prevent lemonade companies from making lemonade with his name and image.
There are obvious benefits to protecting your intellectual property rights. It serves as a way of defending your innovations, designs or, in the present case, a brand of personality and creativity. It is a means of monetising your brand.
So when the world gives you lemons, by all means make lemonade, or any other drink. But perhaps consider more innocuous branding. Might we suggest avoiding Lennonade, Beatlejuice, or Dr Pepper’s Lonely Hearts Club Band.