The Chubby Checker app

Ernest Evans, better known as the rocker Chubby Checker, became world-famous in the sixties with his TWIST numbers. To protect his interests Evens registered his stage name CHUBBY CHECKER as a trademark in 1997. This year it came to a lawsuit against HP. 

Through the HP store (since 2006) it was possible to download the Chubby Checker app. An app that links the shoe size of a man with his genitals. The app is not a sales success (according to HP, approximately 80 units were sold). After the cease and desist from Evans HP immediately removed the app. For Evans, this was not enough, however, he also wants compensation for the abuse of his name.

HP claims not to be responsible for damage caused by third parties. Not HP but someone else offered the app in the HP store. The judge is disagreed. HP has strict requirements that an app has to meet and therefore should have known of trademark infringement. The court awarded Ernest Evans’ compensation claim. In Europe and the Benelux many athletes and artists registered their name and likeness. Be forewarned not to use their name or portret.

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?