We may be living in a material world, but can Madonna claim “MATERIAL GIRL”?

In her classic mid ‘80s hit, Madonna famously claimed that she is a “Material Girl”.  Fast forward 25 years, and now Madonna has used the iconic song title as her brand name for various products marketed in the US, including fashion and accessories.  However, Madonna’s use of “MATERIAL GIRL” is not without its challenges thanks to the rigorous brand protection of US traders using similar brands.

The most recent example is a complaint filed by Rwachsberg Holdings Inc in the United States District Court (Minnesota) against Madonna and her related entities.

The Complaint focuses on the use (or intended use) of MATERIAL GIRL by the defendants on products including bed and bath furnishings and personal care products.  The range of products currently offered under the MATERIAL GIRL brand are available in department stores and promoted through various channels including online (see here).  Madonna’s use (or intended use) of MATERIAL GIRL on bed and bath furnishings and personal care products is an issue for Rwachsberg as the registered owner in the US of the trade mark (and, it claims, acquirer of common law rights in) MATERIAL GIRLS® in respect of various personal care and related products.  According to the Complaint, MATERIAL GIRLS® branded products are advertised online (see here) and are available through national retailers.

Among other things, Rwachsberg claims Madonna’s use of MATERIAL GIRL in the circumstances will cause confusion, mistake and deceive including as to:

· the origin, sponsorship or approval of Madonna’s goods or activities by Rwachsberg

· the impression that personal care products and bed and bath furnishings bearing MATERIAL GIRLS® or MATERIAL GIRL originate with Madonna rather than Rwachsberg (due to extensive promotion of MATERIAL GIRL products).

The Complaint emphasises that Madonna acted in full knowledge of Rwachsberg’s rights.  This, it appears, is particularly in light of a trade mark application for MATERIAL GIRL by one of Madonna’s entities being refused due to the likelihood of confusion with the MATERIAL GIRLS® mark, and that another MATERIAL GIRL application was amended to delete personal care products.

Rwachsberg claims trade mark infringement, unfair competition, and deceptive trade practices, and seeks injunctive and declaratory relief. 

It will be interesting to see how these matters develop.  The position is certainly not straightforward.  After all, ‘Material Girl’ is one of Madonna’s most famous songs, and is associated with her throughout the world.  This raises some questions.  For example, can Rwachsberg’s common law reputation really trump Madonna’s own reputation in this regard?  That said, the Court will no doubt scrutinise the nature and context of that reputation.  True it is, some might say, Madonna and Material Girl are synonymous, but in what setting?  Perhaps bed and bath furnishings, and personal care products, is a bit of a stretch.

Madonna also has to defend another claim filed in August in a United States District Court by L.A Triumph Inc.  In contrast to the Rwachsberg claim, L.A Triumph do not have registered trade marks in the US, instead relying in its claim on a common law reputation in “MATERIAL GIRL” for juniors’ clothing which, it claims in its complaint, dates back via its predecessor to 1997. 

In light of the above comments, and accepting that the factual matrix in the Triumph case and Rwachsberg case might be very different, one would have to say that Rwachsberg will start ahead of the game given it has registered trade mark rights to protect.  This is another example demonstrating the advantage of securing such rights rather than simply relying on common law reputation to protect your position.

 

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