John Lemon vs. John Lennon – Imagine no possessions, I wonder if you can?

Recently the media was particularly interested in the case of Katowice-based company ‘John Lemon’, which was sued by Yoko Ono Lennon in a Dutch court of law. The musician’s widow accused the company of violating her personal rights and the ‘John Lennon’ trade mark rights. However, the case was not resolved by the court, because the dispute ended with a settlement. If there was a court decision, would the Polish company have had a chance to win?

John Lennon was a dreamer. We will never know how he would look at the actions taken to protect his name by Yoko Ono.  However we may consider the legal assessment of this situation. Recently the media was particularly interested in the case of Katowice-based company ‘John Lemon’, which was sued by Yoko Ono Lennon in a Dutch court of law for the violation of John Lennon’s personal rights and the trade mark consisting of the name of the deceased artist. Ultimately, the parties entered into an agreement, under which the company committed to change the name of the beverage offered from ‘John Lemon’ to ‘On Lemon’, thus there was no further legal proceeding. According to a statement by Daniel Hozumbek and Robert Orszulak, owners of the ‘John Lemon’ brand, published on the company’s fanpage, the decision to enter into the settlement was dictated by the court’s request to secure the claims, which would halt the production and distribution of the company’s goods. Moreover, the Dutch law on intellectual property disputes does not provide for a limitation on the costs of the trial, which means that potential litigation costs would most likely exceed the re-branding of the ‘John Lemon’ name. The company’s decision to settle was caused by the significant financial expenses in the dispute with Yoko Ono, which the company would not be able to bear and which would have disqualified the company in the European market if it were to lose.

Trade marks – late registration of the ‘John Lennon’ trade mark by Yoko Ono

The company from Katowice was not the first to register the name ‘John Lemon’. Heineken Espana S.A. has received protection rights in Spain for the following trade marks: ‘John Lemon’, ‘John Lemon and the Citrus Brothers’, and ‘John Lemon & the Citrus Brothers the Fabulous Alcoholic Drink’ in the late 90’s for beer, alcoholic beverages, advertising services, food, catering, restaurant and bar services. At the same time, Schweppes International Limited has since 1997 been granted the same protection in Spain for the trade mark for the goods: mineral water, carbonated and non-alcoholic beverages, fruit drinks and juices, syrups and other preparations for the manufacture of beverages.

Polish lemonade producers ‘John Lemon’ have protected their trade mark in the European Union since2013 in the same way as Schweppes in Spain for clothing, footwear and headgear. It is interesting that the Spanish trade mark and the EU trade mark of the Polish company coexist at the same time – in accordance with the principle of priority, it is not possible to register an EU trade mark where there is an identical or similar trade mark for analogous goods and services in one of the member of European Union. The trade mark of the Polish company could at any time be revoked by the Heineken brand regarding beer and by Schweppes as a whole for non-alcoholic beverages. It seems that the decision on EU registration by the Polish company could have been due to the fact that there was a fairly significant argument in the bucket – the potential non-use of the trade mark by Heineken and Schweppes for more than five years after the registration of the trade mark, which would lead to the confirmation of the expiry to the right to the trade mark by the competent patent office. The same argument was used by Yoko Ono in a dispute with Heineken, which did not prove that the trade marks were used by them (the burden of proof is on the trade mark owner), so the rights of the thirteen trade marks registered by Heineken have expired.In April 2016 ‘John Lemon’ company registered the trade mark ‘John Lemon’  in the United States, Australia, Russia, Israel and other non-European Union countries through the WIPO system for goods analogous to the registered trade mark by Schweppes in Spain.

Yoko Ono has been registering trade marks in the United States under the name ‘John Lennon’, beginning in the 1980s and between 2009-2013. However, the US trade mark protection of Yoko Ono’s trade mark does not include beverages (alcoholic and non-alcoholic) nor clothing – there is still no protection for the goods indicated above. John Lennon’s widow was late for the registration in the European Union – the ‘John Lennon’ trade mark has benefited from industrial property protection since the turn of July and August 2016, also in the classes of Nice Classification in which the ‘John Lemon’ trade mark was registered.

With respect to the Polish company that overtook Yoko Ono with the registration of the trade mark in the European Union, John Lennon’s widow could not have effectively referred to the prior registration of the trade mark, nor for the reputation of the ‘John Lennon’ trade mark. Also, the argument pointed to Heineken, regarding the five-year period of non-use of the trade mark by the rights holder, could not be used against the Polish ‘John Lemon’ – the company has been using the trade mark and the period of five years has not expired.. However, Yoko Ono could based her claim on the fact that the use of the ‘John Lemon’ trade mark violates her personal and property rights, which (in both Polish and EU legislation), is a ground for the invalidity of the trade mark.

According to a settlement between the Polish company and Yoko Ono, the ‘John Lemon’ trade mark shall not be used. From now you will see the ‘On Lemon’ and ‘John is On’ on the lemonade. In May this year, the company filed an application for the registration of the ‘On Lemon’ name and logo to the European Union Intellectual Property Office. On September 27th, the Polish company also filed an application for registration the ‘John is On’ EU trade mark, of course, primarily for non-alcoholic beverages.

Personal rights – memory of the deceased and the right to the business name

Just enough about trade marks. The main threat to the Polish company in the potential lawsuit was the invocation by Yoko Ono for the violation of her personal rights after her deceased husband. Looking at the above under the Polish law (the possible case would be based on the law applicable in the Dutch procedure), it could be stated that the John Lennon’s widow could point out that the Polish company violated her personal rights in the form of a memory of her husband – by the use of the name of the deceased on the label of lemonade, which could hurt her feelings.

The name ‘John Lemon’ reminds us of a great musician. His name and the name of the lemonade differ in one letter: ‘m’, which resembles two ‘nn’ letters – it is not good for the Polish company.. However, it could be argued in court that the Polish company did not rely on the name and the surname of the famous musician to create the business name – John is a popular name and Lemon is just a name of a fruit. This argument is greatly undermined by the fact that the company used several references to John Lennon in its advertising campaigns on Facebook, for example in the ‘Let it be’ campaign.

When using the reference to deceased, it is important to remember that the memory of the deceased person is not absolute. An example is the case of placing the image of the deceased in 1876 George Sand on a cigarette box, in which the Court of Appeal in Poznan overturning the judgement of the court of first instance. The Court of Appeal  indicated that a distant relative by marriage could not be counted as a close relative of the writer. It is impossible to talk about an emotional bond between distant relative by marriage – a plaintiff in the case – and a writer, because both ladies had no opportunity to know each other, thus leading to the lack of objective criteria for violation of personal rights. You have to remember that it is not enough to be an heir or a formally a close relative. It is necessary, under the Polish law, to demonstrate a real bond and the fact that one’s actions this bond violate (detracts, hurts,  mourning, etc.). The case would not be as obvious as some would think if the company decided to take up the fight. Hypothetically, under Polish law, Yoko Ono could also enforce her rights under the Civil Code and the Suppression of Unfair Competition Act. The use of the name ‘John Lemon’ could violate the right of business name of “John Lennon”, in which Yoko Ono is entitled to use in business as inheritor of her husband (but here the priority of use would be a key factor). In addition, if the market of both companies were identical in the subject matter and the territory due to the similarity of the business name both companies, there is a risk of confusion to the business names of entrepreneurs.

But despite the agreement, ‘John Lemon’ is the winner…

…gaining a ‘free’ advertising campaign. We could see the ‘John Lemon’ vs. Yoko Ono dispute in almost all means of mass media both in Poland and abroad. The lemonade producers gave multiple interviews, thus gaining publicity for their goods. The re-branding of the name ‘John Lemon’ to ‘On Lemon’ does not therefore require additional expenditure on advertising – information about the name change appeared next to the publication of the dispute, in the New York Times and BBC News.. We can only regret that this case, undoubtedly very interesting from the legal point of view, did not havea court decision. We should draw a conclusion from the lesson about Lennon. First of all, remember to carefully consider the choice of the name of your product or service so that the expenditures on their promotion do not go to waste. Second and finally, pay close attention to the boundaries of the inspiration of the business by the culture. A Sgt. Pepper in a yellow submarine shouting ‘Get back’ to a Lucy in the sky among diamonds, is not particularly good in advertising or on a label – but a bit more subtle references may be in certain situations acceptable.