The sale of TRUMP themed condoms is nothing new: many online shops have jumped on the band wagon of selling “trump condoms” following certain unfortunate quotes by the former US president on his dislike for this particular form of anti-conception. In 2021 however, a German businessman has taken this gimmick one step further and proceeded to request trademark protection in the EU for the word “TRUMP” for condoms, alcoholic and non-alcoholic drinks, and chocolates.
DTTM Operations LLC, the company in charge of Trump’s trademark portfolio, has – not-surprisingly – filed opposition against this trademark application. According to Trump’s team this trademark application would cause confusion with its earlier trademark “TRUMP” which is protected for, amongst others, hotel services, golfclub services, restaurants, and café’s. Furthermore, the “Trump” trademark application would take unfair advantage of the distinctiveness and reputation of the TRUMP brand.
Risk of confusion and genuine use of the Trump trademark in the EU
Trump’s team argues that there exists a risk of confusion between both trademarks, as the public may believe the Trump branded condoms, drinks and chocolates may originate from the same company as the company running the Trump golf resorts and hotels located in Ireland and Scotland. To argue risk of confusion, not only should the signs in question be identical or similar, the relevant products or services should be too. In this case, as Trump’s team provided evidence that the TRUMP trademark is being used in the EU for resorts and hotels that include Trump branded bars and restaurants, it is likely the EU Trademark Office (EUIPO) will indeed conclude a registration for “TRUMP” for drinks and chocolates would cause confusion. However, this would not block the “TRUMP” application for condoms, given these would likely be found dissimilar to the hotel and restaurant services, for which the earlier TRUMP trademark is registered. Furthermore, Trump’s team did not include any argumentation as to why using an identical or similar trademark for condoms and hotels would cause confusion.
Unfair advantage of Trump’s reputation in the EU
Trump’s team also argues that the TRUMP brand has an extensive reputation and is so well known globally that, even though condoms on the one hand and hotel- and restaurant services on the other hand are dissimilar, the public would anyway assume a connection. According to EU trademark law it is indeed possible to block the registration of a similar trademark, even for dissimilar products or services, if you are able to proof the earlier trademark is reputed and the new trademark could take unfair advantage of this reputation.
Although Donald Trump’s notoriety is quite obvious at this point, an important note to make is that Trump’s team will need to provide evidence the sign TRUMP is famous specifically for the services it is registered for, being hotel- and restaurant services and cafés. This will be more challenging, given the Trump hotel chain has only three establishments in Europe: two in Ireland and one Scotland. Furthermore, the Trump team bases is argumentation mainly on the reputation of President Donald J. Trump and his notable time as US president and provides few materials that could indicate the Trump brand is well known in the EU for hotel- and restaurant services and cafés.
It seems that the submitted evidence – mainly advertisements for the Trump hotels, hotel menu’s, reviews of the Trump hotels on booking websites – would suffice to proof genuine use of the Trump trademark in the EU, but might fall short to proof the Trump trademark also has reputation for hotel- and restaurant services and cafés. It will be interesting to see how the EUIPO applies the standard of proof for establishing a trademark’s reputation in this case, which after all evolves around one of the most (in)famous names in the world.