Wal-mart not so smiley

Slightly embarrassingly, the IPKat can't remember which kind reader sent him this link to the story in Daily Report Online about Charles Smith, a 50-year-old computer store owner who has just won a two-year legal battle with Wal-Mart. Smith had been making and selling T-shirts, beer steins and other items bearing slogans such as “Wal-ocaust” and “Wal-Qaeda.” Wal-Mart failed to protect its WAL-MART trade mark, US District Judge Timothy C. Batten Sr. (Northern District of Georgia) taking a firm view on the issue -- dear to all Europeans -- of whether famous marks, on account of their huge reputations, need more or less protection than less well-known marks:

“The fact that the real Wal-Mart name and marks are strong and recognizable makes it unlikely that a parody—particularly one that calls to mind the genocide of millions of people, another that evokes the name of a notorious terrorist organization … will be confused with Wal-Mart's real products".

Batten also concluded that the yellow smiley face that adorns Wal-Mart signs is not entitled to common law trade mark protection, a decision that one of Smith's lawyers said could hurt Wal-Mart in an unrelated, pending trade mark action over the right to the sunny symbol of happiness. The judgment in Smith v Wal-Mart, No. 1:06-cv-526, is 87 pages long. The Daily Report Online describes it as meticulously crafted.

The IPKat notes that there are other issues at stake: freedom of communication, parody and trade mark disparagement and dilution issues spring to mind. This all goes to show that, the more powerful a trade mark is, and the more cogently it symbolises the business activities of its proprietor, the greater is its vulnerability as a hostage to fortune when others seek to turn its high profile back against its owner.

Walocaust here; Wal-Qaeda here