80s punk rock band, The Clash, have filed a U.S. lawsuit against a sporting goods manufacturer after it took exception to a new line of tennis racquets bearing the band’s name.
In February this year, Wilson launched its latest range of tennis racquets branded with the name ‘Clash’ and, in doing so is facing an IP dispute.
The band’s law team argue that their clients have pre-existing links with the world of tennis, having licensed their music which has been played at a number of international tennis events including Wimbledon.
The rock group also agreed a licensing deal which allowed American Footwear Company, Converse, to produce a collection of ‘The Clash’ branded sports trainers, to mark the 40th anniversary of the punk rock movement.
As such, the lawsuit contends that Wilson’s entry to the market this year with a range of ‘Clash’ branded racquets, covers and sports holdalls – could result in consumers wrongly believing that the band had similarly endorsed these products.
Dorisimo Limited, the UK-based based company which owns the band’s ‘Clash’ trademark, insists that Wilson’s new tennis racquet range is breaching their trademark rights and is now taking legal action to cancel Wilson’s trademark, which was granted by a Californian court, as well as a permanent injunction which would prevent the sportswear firm from attempting to brand any products with the word ‘Clash’ in future.
In addition, Dorisimo is claiming damages estimated at around $3 million and is seeking a court order for all Wilson products with ‘Clash’ branding to be destroyed.
Wilson has yet to issue a comment on the legal dispute.
Alex Hall, a senior solicitor in iLaw’s litigation team who regularly deals with IP disputes, said: “Although this dispute is still in its early stages, in general terms, trademark laws seek to ensure that a company’s trademark or service mark in connection with goods or services are properly protected.
“The crucial legal test is whether it is done in a manner that is likely to cause confusion, deception, or mistake amongst customers or consumers.”
“There are various courses of action which can be pursued if you find that your mark is being infringed. Unless it is an emergency, the usual first step is to write a formal’ Letter Before Claim’ to the infringer setting out the nature of your claim and what you want from them; often giving the other party 14 or 21 days to reply.
“If matters cannot be resolved in correspondence, then it is common for the parties to either meet face to face or to engage the services of a neutral third-party mediator.
“Should that not lead to a conclusion, then there is an option to formally lodge a Court claim in either the High Court or the Intellectual Property and Enterprise Court.”
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