Let’s start the new year on a positive note: how to resolve differences peacefully when two identical or similar brands start overlapping in the marketplace.  You have taken steps to ensure your brand is unique in your own country.  But what happens when that brand becomes successful elsewhere in the world, and suddenly you’ve got a potential dispute brewing with a foreign trade-mark owner? 

Do you litigate or negotiate? 

In the case of Apple vs. Apple, the answer is a bit of both.  Apple Computers with its stylized apple symbol, and Apple Records , with its granny-smith apple logo, have been in and out of court rooms and the lawyers’ boardrooms for more than twenty years, trying to navigate through the trade-mark minefield.  A 1981 arrangement ended up in court in 1989, resulting in a coexistence agreement in 1991 .  This lasted until 2003, when the success of Apple’s iTunes service ignited another lawsuit.  In 2006, Apple Computer was cleared of the allegations of breaching the coexistence agreement in a decision of the High Court of England.

Another recent case illustrates an alternative approach.  Tsubi, the successful Australian jeans designer bumped up against Tsubo, an American shoe company.  Rather than fight a trade-mark infringement battle, Tsubi and Tsubo reached a settlement in which Tsubi will retain its trade-mark in Australia, but will be re-branded as Ksubi in the rest of the world.  The Australian company now faces the challenging task of educating its customers and migrating them over to the new brand.  A little creativity and flexibility means that they will be spending their money on marketing instead of litigation.   

Calgary – 11:06 MST