Feyoncé and Beyoncé: trade mark dispute rumbles on
Written by Ellis Sweetenham on 12 October 2018« Return to Reading Room
As previously reported on the Reading Room, a US trade mark clash has occurred with pop star Beyoncé and a merchandise retailer with a potential namesake.
The defendants in the matter, Feyoncé Inc, have been selling merchandise under the name Feyoncé and also including some phrases from Beyoncé’s songs, including ‘drunk in love’ and ‘he put a ring on it’.
Their market is those who are engaged to be married, e.g. fiancés.
Before this action was raised, the defendants attempted to register ‘Feyoncé’ as a registered trade mark in the US, but this was refused by the US Patents and Trade Marks Office on the grounds that it was confusing similar to Beyoncé’s marks.
On the basis of this, BGK Trade Mark Holdings, the owner of all Beyoncé’s marks has filed action in respect of the following:
- Federal Trademark Infringement
- Federal Unfair Competition
- Federal Trademark Dilution
- Deceptive Acts and Practices
- Trademark Dilution
- Common law unfair competition; and unjust enrichment
The matter is in its early stages and the first blow taken by Beyoncé’s team was decided on this week.
They filed an application requesting the court apply a permanent injunction against the other side from carrying on selling the products and to gain a partial summary judgment in their favour.
While the judge considering this did say
‘There can be no dispute that in marketing to fiancé purchasers, defendants chose the formation "FEYONCÉ" in order to capitalize off of the exceedingly famous BEYONCÉ mark.’
Unfortunately for Beyoncé, that is not the issue at hand. The issue is in respect of whether there is likelihood of confusion between the marks.
Considering the marks similarity, the court highlighted that the two marks are have a high level of visual similarity, being that only one letter is different between them. However, looking at conceptual similarity, the defendants mark is a play on words in respect of the term fiancé and the phrases are linked to this. This therefore may be Beyoncé’s downfall.
The request for a permanent injunction and summary judgment were denied and the matter will now move towards settlement talks and a full trial hearing.
This is definitely one that the intellectual property team here at Lawdit are keeping a close eye on as it may be a long and interesting road and will certainly have a lasting impact on well known mark issues in the future.
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