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Amicus Curiae

Kurt Glen T. Yeung

Trademark protection for fictional titles

Kurt Glen T. Yeung

February 16, 2017

If used in another context, any symbol, design element, or character publicly associated with a TV show is likely to be perceived as licensed or endorsed by the show’s producers.


Trademark protection extends to elements of successful TV shows. This this is because any symbol, design element, or character that the public associates with a show, if used in another context (such as toys), will likely be deemed as officially licensed or endorsed by the show or its producers.

 

 

In the American case of Warner Bros. v Gay Toys, Gay Toys was prohibited from producing its Dixie Racer car toys because it incorporated the elements of the General Lee, which was a 1969 Dodge Charger driven by the Duke cousins in the TV show The Dukes of Hazzard. Citing a previous DC Comics case, the court said that trademark protection extended to the specific ingredients of a successful TV series.

 


There was an argument that because Warner Bros. was not a toy manufacturer, consumer confusion was unlikely. That is, because Warner Bros. is known not to be a toy manufacturer, consumers will not think that the Dixie Racer car came from Warner Bros. The court, however, said that the law’s confusion requirement was satisfied if the public believes that the mark’s owner sponsored or otherwise approved the use of the trademark or symbol.

For a more recent case, there is Viacom v IJR Capital, which came out just last January. Here, IJR was planning to open a Krusty Krab restaurant. Viacom disagreed. When IJR could not be persuaded to abandon the use of the term Krusty Krab, Viacom sued for trademark infringement.

The federal judge found that Viacom’s trademark rights were violated by IJR. The court agreed that the fictional title Krusty Krab can be protected. The court also ruled that through long and extensive use, the term Krusty Krab has become distinctive. So, a restaurant of the same name could be mistaken by consumers as officially licensed or endorsed by Viacom similar to the licensing of Bubba Gump Shrimp Co., a seafood restaurant chain inspired by the film Forrest Gump.

The same principle was at work in the Philippine Intellectual Property Office case of Disney v AD Gothong. Here, AD Gothong tried to register the term BAMBI and a drawing of a fawn as a trademark for edible oil. Disney opposed the registration claiming that it will mislead the public.

The Director General of the Intellectual Property Office agreed that the BAMBI marks of Gothong and Disney were confusingly similar. The Director General held that source confusion -- consumers mistaking that the BAMBI edible oils come from or are associated with Disney -- was possible.

However, unlike on the Warner Bros. and Viacom cases, Disney did not win this case.

The Director General said that because the marks were almost identical, the question should be who between Disney and AD Gothong was the first user of the term BAMBI. Disney alleged use as early as 1941, which was 30 years earlier than the 1974 use of AD Gothong. But apart from this allegation, Disney failed to present proof to substantiate its claim, so AD Gothong was allowed to register the term BAMBI.

The views and opinions expressed in this article are those of the author. This article is for general informational and educational purposes only and not offered as and does not constitute legal advice or legal opinion.

is a senior associate of the Intellectual Property Department Corporate of the Angara Abello Concepcion Regala & Cruz Law Offices.