“Netflix is beefing up its trademark protection in the wake of the success of Squid Game.“
Have you seen Squid Game yet? Last month, Netflix reported that the Korean show broke all records by becoming its largest ever series launch, with 111 million users watching it (or parts of it) in the first 28 days after its release.
In light of this victory, Netflix reacted quickly and filed a large number of trademarks around the world to protect the Squid Game name and logo across a variety of goods and services. According to WIPO, the streaming giant has filed applications in over two dozen jurisdictions, including Argentina, Canada, the European Union, Malaysia, Peru, the Philippines, the Republic of Korea, and the United States.
A quick look at TM view confirms that the number of trademark applications related to the show has simply exploded worldwide in October, for both figurative and wordmarks. While some of these applications may not be from Netflix (and thus may be attempted by third parties to capitalize on the show’s success), it appears that the majority do. Consider this application for a figurative trademark in the United States (USPTO).
What’s interesting here is that Netflix is seeking registration in classes other than TV series, such as classes 16 (books, stationery, office supplies…), 18 (bags, luggage, leather goods…), and 21 (bakeware, kitchenware…). Why? Because those classes all cover key categories of merchandising products for the show, particularly cookie cutters, which, as fans will recall, are at the heart of one of the show’s lethal challenges.
As a result, this is a good (and almost real-time!) example of a multinational ramping up its trademark protection efforts in response to the outpouring of public interest in its show… and thus to ensure that it can reap significant benefits on the merchandising front as well. If its trademark applications are approved, Netflix will have exclusive rights to use the Squid Game name and logo to sell a variety of derived products. Non-official sellers who use those names and logos to sell products protected by trademarks (stationery, kitchenware, etc.) may be liable for trademark infringement because they are selling counterfeit goods.
Non-official merchandise has flooded online selling platforms in recent weeks, with Etsy and Amazon already stocked with cookie cutters, green tracksuits, and eerie full-face masks. Netflix’s trademark filings are thus the company’s way of regaining control over the sale of Squid Game-derived products – and of limiting how which third parties can exploit the show’s reputation for their own gain.
As a result, likely, you’ll soon be able to buy two kinds of Dalgona cookie cutters: unofficial ones (which would have to stop being sold under the “Squid Game” name or logo) and official ones marketed by Netflix and its authorized resellers. Something to keep in mind for your holiday baking!
ECJ rules in favor of Ferrari in unregistered community design case
The European Union’s Court of Justice (ECJ) issued its decision in case C-123/20, which was brought by Ferrari and Mansory Design (a German car design company selling car accessories). This was in response to a preliminary ruling request from the German Federal Court (Bundesgerichtshof).
Mansory Design has been producing and selling “tuning kits” designed to transform the Ferrari 488 GTB (priced at around $250,000 according to Reuters) into the top-of-the-line Ferrari FXX K (priced at $2.6 million).
Ferrari sued Mansory Design for infringement after releasing the Ferrari FXX K to the public for the first time in a press release on December 2, 2014. Ferrari claimed that several unregistered community designs arose at the time of the press release in relation to parts of the FXX K model (components of its bodywork, in particular, the V-shaped section of the bonnet and the front bumper). Thus, Ferrari claimed that Mansory was infringing on its unregistered design rights by reproducing these parts and selling them in its “tuning kits.”
The competent German Regional Court dismissed Ferrari’s claims in their entirety, and the Higher Regional Court dismissed Ferrari’s appeal, stating that the first and second designs claimed never existed, because “Ferrari had not demonstrated that the minimum requirement of a certain autonomy and consistency of form had been satisfied.” The Court also determined that, while the third design claimed existed, it was not infringed upon.
Ferrari then took the case to the German Federal Court of Justice, which asked the ECJ to clarify whether making images of a product available to the public, such as publishing photographs of a car, could lead to making a design on a part or component part of that product available to the public.
For the record, EC Regulation 6/2002 on Community designs grants unregistered community design protection to a design for three years after it is made available to the public within the Community.
So the question here was whether the publication of images of the entire FXX K model in the press release was sufficient to create unregistered community design rights in parts/components of that car (since the components on which Ferrari claimed rights were not made available to the public separately).
The ECJ said yes, emphasizing that the conditions for registered and unregistered Community design protection for products and parts of a product are the same. It did, however, emphasize that in order for the making available to the public of the product as a whole to also constitute the making available of a part of that product, the part of that product must be clearly identifiable when the design is made available.
This decision is a win for Ferrari because it confirms that the unregistered designs claimed by the luxury car manufacturer exist (as they arose when pictures of the car were published via press release) – allowing it to enforce them against tuning-kit copycats.