WHEN LIFE GIVES YOU LEMONS … YOKO ONO TAKES THEM AWAY!

 

"Let it be” was not what Yoko Ono was thinking when she was confronted with a Polish company putting soda on the European market under the name JOHN LEMON. The 85 year old Japanese artist is widely known as the widow of the John Lennon, one of the most popular artists to have ever lived and a member of the, even more famous, British pop band The Beatles. After the assassination of John Lennon in December 1980, Yoko Ono inherited the Intellectual Property Rights belonging to him and extended the protection by registering his name as a trademark in amongst others the European Union. On August 1, 2016 for example, a trademark application was filed for the word mark JOHN LENNON including non-alcoholic beverages in class 32. 

 

When Yoko Ono noticed in 2017 that a Polish company, trading by the name of John Lemon, was distributing sodas throughout various countries under the name JOHN LEMON and the accompanying semi – figurative mark, she took legal action to stop the sale claiming that the name and semi – figurative mark infringes her trademarks and the personal rights of John Lennon. Although the Polish company owned an older(!) EU trademark for its semi-figurative mark including non-alcoholic beverages in class 32 and its statement that it was not abusing and misusing the legacy of John Lennon, it has given in to  the legal actions taken by Yoko Ono (mostly to avoid the extremely high costs of the court proceedings). In other words the parties settled their dispute by means of a settlement agreement in which the Polish company promised to stop using “JOHN LEMON” and to rebrand to another, non-infringing name. Furthermore, the Polish company transferred its EU trademark to Yoko Ono. 

 

Compliant to the settlement agreement, and hoping to give peace a chance, the Polish company changed the name of its sodas to ON LEMON – JOHN IS ON and filed three EU trademark applications. Two applications for the first element ON LEMON (a word mark and a semi-figurative mark) and a word mark application for the element JOHN IS ON. Despite the fact that she did not oppose these applications, Yoko Ono still believed that the use of ON LEMON – JOHN IS ON  was an infringement of her trademark rights. In addition, she had noticed that the Polish company had used the name JOHN LEMON on various occasions even after the settlement agreement was signed. Hence, she again filed a complaint before the court in The Hague, which issued a decision on August 7, 2018, prohibiting the further use of ON LEMON – JOHN IS ON, mainly based upon the doctrine of after-effects

 

According to this doctrine, which has its basis in Dutch case law, the initial use of an infringing sign can generate a risk of confusion when the infringing party is using a new sign which does not differ sufficiently from the previously infringing sign. This doctrine fits in the general principle used in EU Trademark Law being that the risk of confusion should be assessed while keeping an eye on all relevant circumstances. 

 

In the present case the Court ruled that ON LEMON – JOHN IS ON contains the element JOHN, which is identical to the first part of Yoko Ono’s word mark JOHN LENNON, and the element LEMON, which is highly similar to the last part of Yoko Ono’s word mark. However, the Court ruled that the risk of confusion with the word mark of Yoko Ono is mainly caused by the fact that the Polish company had been using the sign JOHN LEMON since 2012, making that the link between the elements JOHN and LEMON and the reference to John Lennon is thoroughly known amongst the relevant consumers. Based on the doctrine of after-effects, the consumers will therefore notice that the elements LEMON and JOHN are close to each other, connecting them and thus causing a risk of confusion given the previous infringing use of JOHN LEMON. 

 

Thus, when already having infringed another’s rights and having ceased this on a voluntarily or forced basis, an infringer should bear in mind to take sufficient distance into account when choosing a new sign in order to avoid the application of the doctrine of after-effects. That way the sour consequences suffered by the Polish company in this case can be avoided.

 

By Jens DE MAERE, GEVERS Trademark Attorney