Dewdney William Drew writes for Solicitor's Journal on similarity, reverse confusion, and trade mark risk
min readA US trade mark dispute between Taylor Swift’s LIFE OF A SHOWGIRL and Maren Flagg’s CONFESSIONS OF A SHOWGIRL has highlighted the practical limits of clearance risk.
The case, brought before the United States District Court, Central District of California, will be determined under US law, but raises relevant issues under various copyright jurisdictions. A key issue will be the degree of similarity between the marks. While they share clear visual similarities, their phonetic and conceptual differences are likely to be examined, including the differing connotations of ‘confessions’ and ‘life’.
Under UK law, it might be possible to advance a “conceptual counteraction” argument, on the basis that sufficiently different meanings of the first word in each mark could offset other similarities between them.
Dewdney William Drew, Head of Brand Protection in our Intellectual Property team, writes in Solicitor's Journal:
This case is a cautionary tale for lawyers dealing with clearance searching. There are more registered trade marks now than ever. Lawyers routinely take commercial considerations into account, in order to clear a brand, even if legal risks persist. Lawyers need to ensure that their legal risk assessment is sound enough to withstand challenge, even when the commercial calculations don’t.
Read the full article in Solicitor's Journal here.
