The Battle of the Identical and Confusingly Similar Trade Marks
In the lead up to its mid-December release, the name “star wars” has been featured in the press more often than usual. However, amidst the promotion frenzy, Lucasfilm (the production company behind Star Wars) has also been keeping busy on other fronts. Last month, Lucasfilm filed a claim for trade mark infringement against several business owners who operate training schools for aspiring Jedi Knights, known as NewYork Jedi and Lightsaber Academy.
One of Lucasfilm’s complaints is the other business’s regular, unauthorised use of the Jedi Order logo which is reportedly “nearly identical, and confusingly similar, to Lucasfilm’s trademark Jedi Order logo … round in shape, with six wing-like shapes curving upward (three per side), and an eight-pointed star featuring elongated top and bottom points stretched into a vertical line”.
What you should keep in mind is that this complaint wasn’t made because the trade marks are the same, the main issue is that they are “nearly identical, and confusingly similar”. A trade mark doesn’t need to be identical for it to be considered an infringement. It simply needs to be “identical enough” so that if you place both trade marks side by side, there is a high probability that most people would be confused between the two.
It’ll be interesting to see how this case unfolds over time but the main lesson to take away is that trade mark infringement can result in severe consequences. Regardless of the outcome, it’s safe to say that these business owners will feel the pinch of going into battle against the Lucasfilm.
If you have discovered that your trade mark has been infringed by someone else or if you have received a complaint about trade mark infringement, do get in touch with us. Our trade mark lawyers would be happy to meet with you to discuss a solution to your trade mark needs.
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Trade Mark Lawyer
Carina Yap is a solicitor with Phang Legal, an incorporated legal practice based in Parramatta CBD providing professional legal services in trade mark advice, representation and trade mark registration to businesses across Sydney and Australia.