A US feral court ruling has been released showing that TikTok has infringed a video editing company when it added a new feature late last year (2020).
Stitch editing (UK based company) has filed the complaint in the US surrounding their US trade marks ‘stitch editing’ and ‘stitch’ under the services for editing.
The basis of the case is that back in 2020, TikTok updated their system using the feature ‘stitch’ to allow users to clip and edit scenes from short 30 second videos. TikTok’s use of the mark has been reported to have had no regard for Stitch Editing’s reputation and goodwill in the field.
The goodwill held by Stitch editing can also be seen in their customer base, which includes the likes of BMW, Louis Vuitton, Heineken, to name a few.
Cease and desist orders have been filed to TikTok to cease the use of the mark in the aforementioned goods.
Under section 5(2) of the Trade Mark Act 1994, it notes “A trade mark shall not be registered if because—
(a)it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or
(b)it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”. As seen further: Trade Marks Act 1994 (legislation.gov.uk)
It is these grounds that will be used in the matter of Stitch Editing v TikTok.
When considering whether a trade mark has been infringed you need to assess the similarity of the marks themselves using an established 3 step approach. Their visual, conceptual and aural similarities. One can also assess the similarities of the goods/serives for which the marks are registered under to assess the weight/extent of the infringement.
It is reported that Stitch Editing has sought an injunction against TikTok, the result of which is still to be decided.
If you have any questions regarding the above or have a trade mark related matter you wish to discuss, please do not hesitate to contact the Trademarkroom team today.