NBCUniversal (NBCU) have been unsuccessful in their motion for a summary judgement on the issue of trade mark infringement in the lawsuit brought by DeLorean in California.
Whilst they were successful in relation to the breach of contract claims in this case, NBCU must now go to trial over DeLorean's claim of trade mark and trade dress infringement in relation to the marketing and licensing of the "time machine" version of the DeLorean DMC-12.
The time machine that we are all familiar with from the Back to the Future films is a heavily modified DeLorean DMC-12. The recent Court decision in this case clearly distinguishes this "Time Machine Car" from a standard DeLorean DMC-12, and considers that NBCU are likely to have some common law trade mark rights arising from their use of this specific vehicle. This does not however mean that NBCU has the same such rights in relation to the DeLorean trade marks (including DELOREAN and DMC).
When selling products and licensing rights in relation to the Time Machine Car, DeLorean claim that NBCU are infringing and causing confusion with their registered trade marks and elements of their branding. In fact, DeLorean claim that there have been instances of actual consumer confusion, which are completely denied by NBCU who argue that their marketing and licensing activities in fact demonstrate the strength of their rights in the Time Machine Car itself (not linked to DeLorean's trade marks).
The Court found that DeLorean have sufficiently strong trade mark rights, that are sufficiently similar to the marks licensed by NBCU, for the case to proceed to trial and NBCU's motion for a summary judgment on this matter has been denied.
...while both parties concede that they sell separate goods, DMCT [DeLorean] contends that proximity exists because both DMCT and NBCU offer license services for DeLorean-related trademarks. DMCT also claims there have been numerous instances of actual consumer confusion regarding the licensing of these trademarks, as well as in customers approaching DMCT to purchase DeLorean automobiles in the style of the Time Machine Car. NBCU contends that these instances do not show confusion, but rather that consumers understand the difference between rights in the film and the Time Machine Car and the rights of the DeLorean-related trademarks
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