MADONNA misses MATERIAL GIRL

Back in the 1980’s Madonna scored a worldwide hit with her single “Material Girl”. In almost all English speaking countries, and in most non-English speaking countries, the single landed a number one spot on the hit parades. Fast forward to 2010 as Madonna decides to launch her own clothing line MATERIAL GIRL. The clothing is inspired by fashion trends from the 80’s and will be sold exclusively at Macy’s.

Unfortunately for Madonna it became clear that LA Triumph has registered the trademark MATERIAL GIRL in 1997, for clothing. A subsequent court case followed, which is still pending. The claims made were: infringement of trademark rights, immediate cessation of all sales under this trademarks and that all profits should be transferred.
 

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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?