When METALLICA fought a rose and won
In what can only be described as the most rock-and-roll garden brawl in Benelux trademark history, METALLICA just took down a French flower breeder over the name… METALLICA.
Yes, you read that right. METALLICA filed a cancellation action in the Benelux against the trademark registration for a rose and won!
NIRP International, a French horticultural heavyweight, bred a new rose with shimmering metallic reflections. “Let’s name it METALLICA!” they thought. Logical, if you’ve never heard of literally one of the most famous bands on Earth.
The problem? Everyone has heard of METALLICA.
Unfortunately for NIRP, Metallica isn’t just a band—it’s a global genre-defining brand. One whose name graces everything from face masks to whiskey to jigsaw puzzles to... dog tags?
In 2024, Metallica (yes, the actual band) filed the cancellation action with the Benelux Office for Intellectual Property (BOIP), arguing that the rose-naming antics of NIRP amounted to free riding on their fame.
Their claim? Unfair advantage based on their reputation proven by:
100+ million albums sold, 14.5 million YouTube views in the Benelux alone, 537 EU concerts, even a whiskey line that literally blasts METALLICA songs at the barrels to age it
Also: METALLICA-branded everything. Socks, skateboards, shot glasses, swimwear, lanyards, baby plates…
NIRP responded. They are a global player in rose hybridisation, naming thousands of flowers and holding over 1,600 trademarks. They claimed METALLICA (the rose) was named for its metallic sheen. Plus, they pointed out that plenty of flowers are named after bands. PINK FLOYD, GENESIS, COLDPLAY... surely there’s room in the garden for METALLICA too?
Not so fast.
BOIP found that the public would absolutely draw a connection between the band and the rose, and not because they thought the band suddenly took up botany. Rather, they’d assume the band was involved or endorsed the product. And since the defendant didn’t prove any “due cause” (like a legitimate personal or historical reason for using the name), the name was deemed to ride unfairly on the band’s iron reputation.
“The Office confirms the finding of Metallica’s reputation as a world-famous rock band as a fact of common knowledge and concludes that the contested mark takes unfair advantage of the distinctive character and reputation of the trademarks invoked”.
Knijff is pleased to have assisted the band Metallica in this Benelux trademark case, working in collaboration with Metallica’s U.S. counsel, Sheppard Mullin.
Author: Erik Stegeman
Bio: Erik Stegeman is a trademark attorney and specialist in trademark protection for bands, DJs and artists. His client portfolio includes many famous DJ’s like Charlotte de Witte, Swedish House Maffia and Tiësto. He writes a lot about music trademark infringements. And if you are lucky, he will give you hints on the latest band and DJ’s.