A last judgment just lately rendered in WM. Wrigley Jr. Firm v. Roberto Conde, et al., is nothing in need of a cautionary story and a strong reminder to hashish corporations: Parody is NOT a protection to trademark infringement in this sort of industrial context.
The events
Everyone knows Wrigley – it’s a titan within the meals business and gives a variety of merchandise like gum, mints, and candies, together with Skittles, Starburst, and Lifesavers. Wrigley is the proprietor of quite a few logos and, related right here, owns and have used the well-known SKITTLES and STARBURST marks.
The judgment, which is predicated on a consent decree between the events, is rendered towards Steven Mata, a person who lives and conducts enterprise in Orange County. Mata does enterprise as OC420, which is a retailer of edible hashish merchandise.
Mata marketed and bought merchandise like “Medicated Skittles,” “Medicated Cannaburst Gummies,” and a “Munchies Edible Deal.” The packaging is clearly meant to mimic the Skittles and Starburst packaging, which adopts and makes use of the phrase marks in the identical trend and includes a graphic design that can be practically equivalent to the unique candies.
The issue
There’s a line between utilizing one other’s mark to make political or social commentary and utilizing one other’s mark to achieve recognition and enhance gross sales of your personal product. We’ve written earlier than about hashish corporations which have tried to spoof well-known marks and have paid a worth for it.
Hershey’s, for instance, made a press release towards the business when it initiated a number of lawsuits over a number of years towards corporations that branded cannabis-infused chocolate merchandise with names equivalent to “Mr. Dankbar,” “Reefer’s Peanut Butter Cups,” “Hasheath,” and “Ganja Pleasure,” all meant to mimic the favored chocolate merchandise. These circumstances finally settled out of courtroom.
The judgment
The judgment states that Mata’s conduct constituted:
- Trademark infringement;
- Trademark dilution;
- Unfair competitors and misleading acts;
- Dilution underneath related California Enterprise and Professions Code statutes; and
- Counterfeiting.
The Court docket issued an injunction towards any additional counterfeiting, infringement, dilution, and unfair competitors. Mata can be to recall any merchandise, packaging, and promoting that’s already out on the earth, and supply them to Wrigley’s attorneys for destruction. Lastly, Mata is to offer an accounting of all income from the merchandise and “disgorge” them (flip them over) to Wrigley, along with statutory damages of $2 million per counterfeit mark, in addition to pre-judgment curiosity, Wrigley’s prices and its attorneys’ charges in prosecuting the case.
Oof. This is likely one of the harshest judgments we’ve seen shortly, and that’s as a result of Mata’s conduct was malicious and willful. (Sidenote: this additionally implies that if Mata filed for chapter, this judgment is non-dischargeable.) So please – don’t end up in an identical place and ensure to work with good mental property legal professionals to clear your model from the get go.
And in the event you’re fascinated by comparable circumstances, listed below are previous articles of different case research: