Cat vs Deadmaus??

Newsletters |

1 February 2017

Fans of electro house music will be familiar with the artist who goes by the name of “DJ Deadmau5” (which is apparently pronounced “dead mouse”). He’s a huge hit in the industry.

A few years ago DJ Deadmau5, ironically, adopted a cat from the Humane Society and named him “Prof. Meouwingtons, PhD”, apparently because he meows a lot (the name is a play on “meowing tons”). Deadmau5 claims that he started using “MEOWINGTONS” as trademark in 2010. Prof. Meowingtons has a number of social media accounts in his name and launched a range of headphones under the MEOWINGTONS brand (which includes a set of miniature headphones for cats…).

DJ Deadmau5 claims that the MEOWINGTONS brand has grown into an extensive brand which, although separate from the Deadmau5 brand, is closely tied to it and is used in relation to a broad range of merchandise aside from the kitty headphones.

In 2015 DJ Deadmau5 set out to register MEOWINGTONS as a trademark in the USA, only to find that the name had already been registered by someone else who uses it as the name of an online store that sells cat themed merchandise. This got the DJ’s hackles up. He claims that the online store only opened its proverbial doors in 2014, while he has been using the MEOWINGTONS trade mark in since 2010 and, to make things worse, he claims that the proprietor of the online store knew about his MEOWINGTONS brand. On this basis, DJ Deadmau5 has filed a petition to cancel the earlier registration for the MEOWINGTONS trade mark and we wait with “baited” breath to hear the outcome of the dispute.

So what can we take from this story?

Well, first off, this is another prime example of why it is important to register your trade mark sooner rather than later, which is precisely what the proprietor of the Meowingtons online store did. If DJ Deadmau5 had applied to register his trademark in 2010, when he alleges that he started using it, this whole debacle could have been avoided.

In the USA and indeed in many other countries, including South Africa, if this dispute had arisen here, DJ Deadmau5 may well be successful in his attempt to cancel the prior registration if he is able to prove that he has prior, common law rights to the trademark. But it is important to remember that not all countries recognise common law trade mark rights and in those countries the rights to a trade mark are determined on a “first to file” basis.

So the moral of the story is that you should always be proactive rather than reactive when it comes to protecting your trade mark.

 

Vicky Stilwell
Consultant
Trade Mark Attorney
Email vickys@kisch-ip.com
Tel +27 11 324 3049