A beverage company based in Katowice, Poland which supplies all over Europe their John Lemon lemonade have been subject to Yoko Ono’s lawyers threatened action in March this year after she tried their product in one of the Dutch bars. It is unsure whether she liked the lemonade itself, but certainly, she did not like the name under which it was sold – JOHN LEMON.
The widow of Beatles legend John Lennon says the soft drink infringes on the trademark of her late husband’s name and “abusing and misusing the legacy of John Lennon to sell their soda”.
The Polish beverage company was totally surprised, they even thought that the letter from Yoko Ono’s lawyers they received was a prank. Their surprise was amplified by the fact that they had registered a trademark in the EU Intellectual Property Office in 2014 without any problem.
In addition, lawyers acting for the beverage firm denied it had infringed the late star’s rights. It was also revealed that the trademark JOHN LENNON was filed and registered by Yoko Ono in the EU in 2016.
However, as they and their distributors received warnings that they will face costs of 5,000 Euros per day or 500 Euros for every bottle of lemonade sold if they violated the disputed trademark and distributed images of their campaigns associated with John Lennon through social media, they decided to settle this matter with John Lennon’s widow allowing the company to continue in business. They agreed to pay her lawyers’ fees about US$ 13,000 and to re-brand the name to ON LEMON from November 2017.
Albeit they were trying to argue with Yoko Ono’s lawyers, one of their distributors in the UK said that “all of us involved with this product are start-ups and we couldn’t take on someone who is worth many, many millions” which will be true in case of most start-ups who cannot afford lengthy and costly procedures.
Unfortunately, in this case we will never learn about the legal outcome – whether or not Yoko Ono’s legal action would indeed have been successful in the court or not, however, this case teaches the following:
- To protect a brand, it is essential to register its trademark in as many relevant markets – as early as possible, to minimize its infringement. This also increases the likelihood of success if the trademark is infringed upon and is likely to deter infringing entities from perusing legal action. However, to be able to register a trademark initially without any problems does not guarantee that there will not be any disputes over its use at a later date;
- To choose the right name involves a lot of thought and research – it is essential to make sure it will not infringe somebody else’s existing brand and their other rights protected by law – such as copyright, design and patent rights but also personal rights such as the right to the image or name.
- To settle a matter amicably can be a more effective way to solve the issue as court procedures are usually not only lengthy but also very expensive. Companies instead of developing the business can often be dragged into court litigations and lose sales momentum.
- To be sued by a bigger competitor in the market does not necessarily mean the end of the world – it is still possible to get worldwide publicity like in case of John Lemon. Arguments around this case were written not only in Poland but also across the UK, Europe, US and other countries driving cognizance not only about the old brand name but also the new name of their products.
Katarzyna Eliza Binder-Sony is a Polish intellectual property and commercial solicitor based in London, specializing in European Union trademark and design protection. Besides developing and protecting her clients’ brands and ideas, Eliza also provides consultancy services in both commercial and corporate law. Eliza received her LL.B from the University of Law, London (Hons) and has a Masters in Law from the University of Cardinal Stefan Wyszynski, Warsaw, Poland (Hons). She loves coffee, particularly Spanish café bombón (and generally everything Spanish – food, people, sound of language, country, beaches, islands, and literature).