Hip-hop star Dr Dre has lost a long-running trade mark dispute but would it have been different if proceedings were brought in another country?
Gynaecologist, Draion M Burch, filed an application to register the moniker DR DRAI to cover the provision of educational and entertainment services, namely motivational speaking services in relation to the medical field and health care services rendered by a doctor.
Dr Dre’s trade mark dispute filed in the USA
The famous rapper filed an opposition against the application for DR DRAI, arguing that the application for DR DRAI was likely to cause confusion in the market place. He was concerned that because Dr Dre is famous, when the mark for DR. DRAI is used consumes would assume its applied-for goods and services would refer to Dr Dre. In addition, Dr Dre submitted that celebrities were often using their name in connection with a vast array of goods and services.
The other side of the trade mark dispute
Mr Burch countered that because Dr Dre was not a medical doctor nor was Dr Dre qualified to provide medical services or sell products specifically in the medical or healthcare industry, there was no likelihood of confusion. Whilst celebrities use their name to promote goods or services, there was no evidence submitted by Dr Dre that it was common place for celebrities to sell or licence the sale of goods or services of the type covered under the DR DRAI application.
Mr Burch also showed that he had no intention of trading off the goodwill of Dr Dre as the application was for his Draion.
For these reasons, Dr Dre was unable to prevent an application to register DR DRAI.
What would have happened if the trade mark was filed in the UK or another country?
It is important to note that if you are trading in different countries, not only are the rules of trading different but also the ways in which to protect to your assets, namely, your trading name.
A good example of this is the recent case involving Lionel Messi https://www.stephens-scown.co.uk/brand-protection-2/what-a-goal/ , the European Court came to a controversial decision based on how famous Messi’s name is. Had Dr Dre issued opposition proceedings the UK or EU, would the outcome have been different…we may never know.
We have extensive experience in dealing with foreign trade marks and providing strategies for international growth.
We can provide advice on the best ways to obtain trade mark protection in other countries and assist you to monetise your trade mark.
Sanjay Raphael is a Trade mark attorney in our Intellectual Property team. If you want to know how to protect your business and trading name across different countries please do get in touch by telephone 01392 210700 or email TradeMarks@stephens-scown.co.uk