Whilst the name ‘John Lemon’ may be seen by some as a mildly amusing brand name for lemonade, Yoko Ono (widow of the deceased Beatle, John Lennon) is certainly not one of them.
Karol and Thaiz Chamera set up their UK company ‘Mr Lemonade Alternative Drinks Ltd’ in 2016 but were manufacturing and marketing soft drinks since 2014. The company sells a variety of branded soft drinks under such names as ‘Fritz-Kola’, ‘Wostok’ and to the ire of Ms. Ono, ‘John Lemon’. John Lemon soft drinks are manufactured by a Polish firm which, in 2014, was successful in obtaining an EU trade mark registration for a stylised version of the name ‘John Lemon’ for various goods in Classes 11, 25 and 32.
John Lemon soft drinks are distributed to bars and restaurants in the UK and 13 other EU countries. The small family-run company is said to have invested a lot of time, money and effort in to branding and advertising the soft drinks to consumers across the EU.
‘Ono’ you don’t!
Ms. Ono eventually became aware of the use of the mark ‘John Lemon’ when an advertisement for ‘John Lemon’ incorporating an image of the legendary musician appeared on the company’s social media page. Ms. Ono viewed the use of John Lennon’s reputation as an unacceptable abuse of the musician’s legacy. Ms. Ono’s lawyers therefore proceeded to write to the soft drinks company alleging infringement of Ms. Ono’s EU trade mark registrations for ‘John Lennon’ (filed in 2016) and damage to the goodwill and reputation subsisting in the name and image of John Lennon.
In terms of registered trade mark infringement, on the face of it, the manufacturer of ‘John Lemon’ actually had the upper hand due to the fact that it had filed and registered its EU mark more than two years before Yoko Ono had registered the name ‘John Lennon’ at the EU Intellectual Property Office (EUIPO). However, the primary basis of Ms. Ono’s claim would probably have rested on earlier unregistered rights, in particular the goodwill and reputation attached to the musician’s name and image. Any goodwill and reputation found to subsist in John Lennon’s name and image would be protectable in the UK under the common law tort of ‘passing off’. Mr Lennon’s name and image could also be protected in other EU countries under the law of ‘unfair competition’.
Trade mark litigation is notoriously expensive and as a result, small businesses are often faced with little option other than to settle these matters out of court. This appears to be what has happened in this case, as it has been reported that the company has agreed to sell through its remaining ‘John Lemon’ stock of soft drinks, so that they may be rebranded as ‘On Lemon’ from the beginning of November 2017.
This case highlights the importance of seeking professional advice before launching a business or a line of goods or services under a new trade mark. By being cautious and carefully assessing the legal and commercial impact of your trade mark, business owners can save themselves a lot of time and money later on. If you are thinking of launching a new trade mark and would like professional advice on trade mark law, please get in touch.