The High Court has recently applied the European Court of Justice decision in Interflora v Marks & Spencer plc when considering whether the defendants’ use of “Lady Goo Goo” would constitute an infringement of the claimants’ “Lady Gaga” trademark.
The case is a useful contrast to Interflora in that the Lady Goo Goo mark, when used in the music market, was found to be offering an imitation rather than alternative goods, and therefore amounted to infringement of the Lady Gaga mark.
A registered trade mark owner may prevent third parties from using, in the course of trade, any sign where, because of its identity with, or similarity to, the trade mark, and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark
Lady Goo Goo
Lady Goo Goo is a cartoon character (a singing blonde baby in big sunglasses) in an online game called “The Moshi Monsters Game”, held to be at least ‘reminiscent’ of Lady Gaga.
The claimants particularly objected to the internet release of a song by Lady Goo Goo, “The Moshi Dance”, which bore a resemblance to Lady Gaga’s song “Bad Romance”. The song had already been very successfully distributed on YouTube, and the defendants were planning a commercial release on iTunes. The claimants sought an interim injunction to prevent this.
The defendants accepted, for the purpose of the interim injunction application, that there was a serious issue to be tried both in relation to confusion infringement and reputation-based infringement.
It was held that the average consumers in this case were 6-12 year olds likely to encounter Lady Goo Goo in the Moshi Monsters Game, and consumers likely to encounter the “The Moshi Dance” on YouTube and, if released, iTunes and other internet media, though consideration was also given to older users.
It was held that it was strongly arguable that young people playing the game may make a clear connection between LadyGoo Goo and Lady Gaga. Whether older consumers would make such a connection was less clear, but there was still a possibility that some would think Lady Goo Goo to be connected with Lady Gaga, for the following reasons:
- “Goo goo” and “ga ga” are both noises made by babies.
- Lady Gaga has made her name and reputation in the field of commercial popular music, and that is the field into which Lady Goo Goo is now entering.
- Lady Gaga uses the term “Little Monsters” to refer to her fans.
- The defendants have themselves tagged their YouTube song with the tag “Lady Gaga” so if one searches for “LadyGaga” and, for example, “monsters”, the search results include Lady Goo Goo’s “The Moshi Dance.”
All of this would give rise to a risk that consumers would think that Lady Gaga and Lady Goo Goo were economically connected. .
It was held that it was quite clear that Lady Gaga had the necessary reputation, concluding that she had a “huge reputation” and a highly distinctive mark. There was therefore a clear likelihood of confusion as to the economic link between Lady Goo Goo and Lady Gaga.
The judge then examined various forms of reputation infringement on the facts, taking into consideration such factors as dilution, tarnishment or degradation, unfair advantage, parody and overall damage to the claimant.