Most Famous Trademark Disputes in History
Trademark disputes reveal how far a brand’s legal rights extend and where the public’s freedom to imitate, parody, or refer to famous names begins. While every country has its own laws, a few high‑profile cases have shaped worldwide discussions about trademarks. The cases below highlight classic conflicts between creativity and corporate identity, show courts grappling with color trademarks, product shapes, and even dog‑toys, and illustrate how trademark law balances consumer confusion with free expression and fair competition.
Apple Corps vs. Apple Computer (2006)
The Beatles’ record label, Apple Corps, and Apple Computer once shared a name but operated in different industries. In 1991, they signed a trademark co‑existence agreement reserving music‑related uses for Apple Corps and computer‑related uses for Apple Computer. When Apple Computer launched the iPod and iTunes Store in 2003, Apple Corps sued, arguing that using the Apple logo on a digital music store amounted to a breach of the 1991 agreement. Mr Justice Mann dismissed the claim, finding that iTunes delivered musical content as a data‑transmission service and thus fell within Apple Computer’s reserved field. This decision allowed Apple Inc. to expand into music distribution and foreshadowed the company’s evolution into a media giant. It also highlighted how carefully drafted coexistence agreements must anticipate technological convergence.
Christian Louboutin vs. Yves Saint Laurent (2012)
Luxury shoe designer Christian Louboutin trademarked its signature high‑heeled shoes with bright red outsoles. When rival Yves Saint Laurent (YSL) released a monochromatic red shoe, Louboutin sued for infringement. The U.S. Court of Appeals for the Second Circuit held that a single color can serve as a trademark and recognized Louboutin’s red‑sole mark as valid when the red sole contrasts with the remainder of the shoe. However, the court affirmed the denial of an injunction against YSL’s all‑red shoes because Louboutin’s trademark did not cover monochromatic footwear. This case affirmed the protectability of distinctive colors but cautioned that such marks have a narrow scope.
Adidas vs. Payless ShoeSource (2008)
Adidas’s “three‑stripe” design is one of the most recognisable marks in sport. In the early 2000s, discount retailer Payless sold shoes with two and four stripes that resembled Adidas products. A Portland jury found that Payless willfully infringed Adidas’s trademarks and trade dress and awarded nearly US$305 million in damages, one of the largest trademark verdicts in U.S. history. The district court later reduced parts of the award because some damage calculations were overstated, but upheld punitive damages for willful infringement. Payless eventually settled with Adidas. The case underscores the financial penalties for copying distinctive designs and the importance of protecting brand identity in mass‑market channels.
Nestlé’s KitKat Shape vs. Mondelez (2018)
Nestlé obtained a 3‑D trademark in the European Union for the four‑finger shape of its KitKat chocolate bar. Confectionery rival Mondelez (owner of the competing “Kvikk Lunsj” bar) petitioned to cancel the mark. The EU General Court ruled that Nestlé had not shown that the shape had acquired distinctiveness throughout the EU, and the Court of Justice of the EU confirmed that decision. The court explained that for a mark lacking inherent distinctiveness, the applicant must prove that the mark has acquired distinctiveness through use in all parts of the EU where it lacked such character. Because Nestlé’s evidence focused on only some member states, the registration was invalid. The decision sets a high bar for product‑shape trademarks within the EU.
Budweiser (Anheuser‑Busch) vs. Budějovický Budvar
The “Budweiser” name has roots in České Budějovice (Budweis) in the Czech Republic. Czech brewery Budějovický Budvar and American brewer Anheuser‑Busch have contested the mark for over a century. A notable chapter occurred in 2020 when the Italian Supreme Court ruled in favor of Budvar. The court found that “Budweiser” is an appellation of origin linked to the Czech territory and thus protects the geographical indication. It annulled earlier decisions granting exclusive rights to Anheuser‑Busch and allowed Budvar to continue using Budweiser on its products. The case underscores conflicts between trademarks and geographic indications and highlights how courts consider cultural heritage in brand disputes.
Mattel v. MCA Records (2002) – “Barbie Girl”
Toy maker Mattel sued MCA Records after the pop group Aqua released “Barbie Girl,” a satirical song that used the name “Barbie.” Mattel argued that the song infringed on and diluted its trademark. The Ninth Circuit held that “Barbie Girl” is a parody and nominative fair use of the Barbie mark. The court found that the song’s title describes the artistic work rather than identifying its source and that there was no likelihood of confusion. It famously concluded its opinion by advising the parties to “chill”. This case is often cited to demonstrate how trademark law makes room for artistic expression and humorous commentary.
Coca‑Cola Co. v. Koke Co. of America (1920)
One of the earliest Supreme Court trademark cases involved a competitor marketing a soft drink under the name “Koke.” Coca‑Cola sought to enjoin the use of “Koke,” while the defendant argued that “Coca‑Cola” itself was deceptive because early formulations contained cocaine. The Court held that although the beverage once contained cocaine, the Coca‑Cola Company had eliminated the drug and promoted the beverage as a non‑narcotic soft drink. The name “Coca‑Cola” therefore signified the plaintiff’s product rather than its ingredients and was not deceptive. The Court granted an injunction against “Koke” but allowed the competitor to use the generic term “Dope”. This early case shows the power of a mark even when product formulations evolve.
Jack Daniel’s vs. VIP Products (2023) – “Bad Spaniels”
The “Bad Spaniels” chew toy mimics a bottle of Jack Daniel’s whiskey, replacing “Old No. 7 Tennessee Sour Mash” with jokes about canine excrement. The toy’s maker, VIP Products, sought a declaration that the parody did not infringe Jack Daniel’s trademarks. The Supreme Court vacated lower court rulings and held that when an alleged infringer uses a trademark as a source identifier for its own goods, the First Amendment–oriented Rogers test does not apply. Consumer confusion is most likely when someone uses another’s mark as a mark, and parody does not automatically shield such use. The case clarifies that humorous commentary may still infringe if it functions as a trademark.