A recent final ruling in the case of WM. Wrigley Jr. Company v. Roberto Conde, et al. should serve as a powerful lesson and warning to cannabis entrepreneurs that parody is NOT a valid defence against trademark infringement in this kind of commercial setting.
We all recognise Wrigley as a major player in the food sector that produces a variety of candies, gum, and mints, including Skittles, Starburst, and Lifesavers. Wrigley is the owner of many trademarks, including the well-known SKITTLES and STARBURST marks that are pertinent to this discussion.
The judgement is given against Steven Mata, a person who resides in Orange County and runs a business there, and it is based on a consent agreement between the parties. Mata operates as OC420, a company that sells edible cannabis products.
Products including “Medicated Skittles,” “Medicated Cannaburst Gummies,” and a “Munchies Edible Deal” were advertised and sold by Mata. The packaging is obviously intended to mimic the Skittles and Starburst packaging, which employs the word marks in the same way and adopts them as well. It also has a graphic layout that is remarkably similar to that of the original candies.
There is a difference between utilising someone else’s trademark to make a political or social statement and doing it to build brand recognition and boost sales of your own goods. We’ve previously written about cannabis businesses that tried to imitate well-known brands and paid a price for it.
By filing numerous lawsuits over several years against businesses that labelled cannabis-infused chocolate products with names like “Mr Dankbar,” “Reefer’s Peanut Butter Cups,” “Hasheath,” and “Ganja Joy,” all of which were intended to mimic the names of well-known chocolate products, Hershey’s, for instance, made a statement against the industry. These disputes were finally resolved outside of court.
The judgment states that Mata’s conduct constituted:
- Trademark infringement;
- Trademark dilution;
- Unfair competition and deceptive acts;
- Dilution under relevant California Business and Professions Code statutes; and
A restraining order was obtained by the court prohibiting any additional copying, infringing, diluting, and unfair competition. Additionally, Mata must destroy all existing merchandise, packaging, and advertising after recalling it and giving it to Wrigley’s legal counsel. Finally, in addition to paying statutory damages of $2 million per counterfeit mark, pre-judgment interest, Wrigley’s costs, and its attorney’s fees in bringing the lawsuit, Mata is required to submit an accounting of any earnings from the items and “disgorge” (turn them over) them to Wrigley.
Oof. Since Mata’s actions were malevolent and purposeful, this verdict is among the toughest we’ve heard recently. (Side note: this also means that this judgement would not be dischargeable if Mata filed for bankruptcy.) Please take care to deal with competent intellectual property attorneys to protect your brand from the start so that you do not find yourself in a similar situation.