The United States Court of Appeal 2nd Circuit ended a five-year long trade mark battle between talk show royalty, Oprah Winfrey and motivational speaker and business coach, Simone Kelly-Brown.

In 2011, Kelly-Brown brought an action for trade mark infringement against Oprah and her publishing company for printing the phrase ‘Own Your Power’ on the cover of Oprah’s magazine.

Kelly-Brown and her company, Own Your Power Communications Inc., claimed they had registered ‘Own Your Power’ as a design trade mark in the United States since 1996 and that Oprah had infringed their trade mark by using the phrase on the magazine cover.

Both the Federal Court and the 2nd Circuit Court disagreed with Kelly-Brown and determined that Oprah had not infringed the trade mark.

The History of the Case

In 2012, the US District Court ruled in favour of Oprah and the defendants, stating that there was no trade mark infringement because Oprah used the phrase to describe the magazine’s contents. The magazine’s trade mark was its title – “O, The Oprah Magazine” – not the phrase.

The 2nd Circuit Court of Appeals revisited the issue in 2015, ruling in Oprah’s favour. Oprah had, at this point, challenged the validity of the trade mark as part of her defence – further complicating the matter. Ms Winfrey argued that the trade mark lacked the necessary distinctiveness as it merely described the service Kell-Brown provided as a motivational speaker and coach. The 2nd Circuit agreed with this argument and also found that Kelly-Brown did not show enough evidence to demonstrate a likelihood of confusion, which is an essential element of trade mark infringement in the US.

The Final Decision

The most recent decision handed down on Friday, 7 October, turned on three key questions:

  • Was the registered trade mark a valid trade mark?
  • What protection did Kelly-Brown’s registered trade mark give her?
  • Was there a likelihood of confusion from Oprah’s use of the trade mark?

Validity of the Trade Mark and Protection of a Design Trade Mark

A mark is not eligible for registration if it lacks a distinctive element. Oprah argued that USPTO should not have registered the trade mark in the first place as ‘Own Your Power’ is a phrase merely describing the services Kelly-Brown provides.

Businesses typically satisfy the distinctiveness requirement by incorporating an image or another element that would distinguish the phrase. Kelly-Brown registered the trade mark as a design trade mark where the phrase ‘Own Your Power’ appears in a particular stylised blue font. Technically speaking, this gives Kelly-Brown the exclusive right to the phrase in that font only and limited protection regarding other similar looking fonts.

The Court did consider whether the blue font as a design element was enough to make the descriptive term registrable but ultimately concluded that it was not. Therefore the phrase in its font was protected, but the words themselves were not, and Oprah’s use, consequently, did not constitute infringement.

Australia’s position concerning descriptive trade marks is similar to the United States. Under section 41 of the Trade Marks Act 1995 (Cth) (the Act), a trade mark must distinguish the trader’s goods or services. A generic phrase like ‘Own Your Power’ would require an additional element to adapt the mark to distinguish the goods or services.

Likelihood of Confusion

Kelly-Brown’s appeal was also unsuccessful because she failed to show that there was a likelihood of confusion from the magazine’s use of the phrase. The Court did not believe that Kelly-Brown’s reputation was sufficiently established that people would see the phrase ‘Own Your Power’ and think that it was associated with her own business.

In Australia, trade mark infringement does not require the plaintiff to show that there is a likelihood of confusion arising from the alleged infringement. Trade mark infringement occurs where a party uses the same or a similar mark in relation to identical or similar goods or services. The key question is whether the infringer is using the mark as a trade mark. A mere reference to a registered trade mark is not considered to be ‘use’ and is not likely to be infringement.

While the US does not have the same ‘use as a trade mark’ requirement for infringement, the US District Court Judge in the 2012 case had ruled that Oprah’s use of the trade mark was descriptive and had therefore not infringed the trade mark. It is likely that Australian courts would come to a similar conclusion through the ‘use as a trade mark’ test.

Key Takeaways

Ultimately, a trade mark boils down to the use of a mark or symbol to distinguish one trader’s goods or services from another. Under the Trade Marks Act 1995, a mark must have a distinguishing element so that they don’t merely describe the goods or services. Trade mark owners in Australia concerned about infringement should first consider whether the use is in fact as a trade mark or merely descriptive. Descriptive trade marks are tough to enforce and as such, difficult to register as trade marks.

If you have any questions about your rights as a trade mark owner or need assistance enforcing your existing rights against a potential infringer, get in touch with a trade mark lawyer 1300 544 755.

Dhanu Eliezer
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