Is Anyone Buying The Avengers' Box Set thinking They're Actuallying Buying A Rimowa's Topas Case?

from the likelihood-of-confusion dept

The latest example of nutty trademark claims comes from Rimowa, makers of various luxury luggage cases, including the Topas briefcase that has been seen in various movies over the years -- including The Avengers. The case is distinct, and Rimowa actually cultivates its appearance in movies, hiring a product placement firm with the ridiculous name PRO.P.AG.AND.A G.E.M. to get its products into movies. As Marvel was working on the movie, it apparently got one of the Rimowa Topas cases itself, but also asked the product placement firm for some backup cases, which it provided on the condition that they be returned to the company after filming (which they were). However, with Marvel announcing its box set being packaged in a "replica" case, Rimowa is not happy:
Rimowa has now sued Marvel and Buena Vista Home Entertainment claiming trademark infringement over the case. The lawsuit notes:
Images of the replica briefcase on Marvel’s advertising materials, and fan video from Marvel’s product display at this year’s ComicCon convention, show the plastic ‘replica case’ to be a close copy of Rimowa’s Topas attache case in every respect but quality -- from the proportions and coloring, to the style of the handle and latches, and, of course, in the use of the trademarked parallel ridges around the body of the case.
Of course, for there to be a straight trademark infringement claim, (1) they have to be competing in the same market and (2) there must be a likelihood of confusion. It's difficult to see how either thing is true. A movie box set is not in the same market as an overpriced travel case. And no one's buying one thinking it's the other. In fact, I'd think that having the replica used for the box set would likely increase interest in buying a real Rimowa case. And isn't that why the company wants its cases in movies in the first place?

There's a separate "dilution" trademark claim, suggesting that this packaging somehow dilutes the company's trademarks, but again, I just don't see it. It seems to reinforce the value of the original cases, not take anything away from it. Of course, the company's actions have ensured that I'd have no interest in ever buying any of its products in the future -- in which case, filing silly petty lawsuits is likely to do a lot more harm to its brand than the fact that Marvel is playing up its style in the box set packaging for a hugely popular movie.

Filed Under: avengers, box set, brief case, confusion, topas, trademark
Companies: buena vista, marvel, rimowa

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  1. identicon
    Anonymous Coward, 9 Aug 2012 @ 8:18pm

    Re: Re:

    I'll start this by saying that I have no idea how trademark law works in law, but the different tests mentioned in the article can still be analysed and commented on.

    I agree with the majority here that there is no competition here, the different sizes (they are different, right?) in particular would make it extremely unlikely that anyone would want to use the dvd case as a replacement for real luggage.

    On the dilution side, I find myself wondering. The trademark refers to the style and shape of the briefcase... if someone sees a case that looks like this, Rimowa wants them to think of their cases and want to buy one. If people start associating the style with the Avengers movie (or anything else), then that could be justified as dilution because (more) people seeing the case may now think about movies instead of Rimowa briefcases.

    Does the law actually work like that? I have no idea. What happens if the competition test fails but the dilution test succeeds? I have no idea.

    It does seem that the best winning move for Rimowa would have been issuing a license with a condition that the case would require printing or embossing "briefcase design licensed from Rimowa" somewhere on the case itself. I wonder how much say the lawyers actually have in the decisions made in these affairs. Then again, if Rimowa didn't find out until after the cases were made then things get more difficult again. Is it possible that this is the stick held up against the carrot (that we can't see) asking for the studio to add the license to the case?

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