It's a question that arises more frequently nowadays, due to human rights arguments about freedom of speech and expression.
The short answer is yes - parodying another’s registered trade mark can constitute registered trade mark infringement. The long answer is not always - it depends on the facts.
Trade marks are source identifiers. What this means is that they tell you the trade origin of the goods/services in connection with which the trade mark is used.
In other words, they tell you who is responsible for a product or service. They differentiate and distinguish one trader’s goods/services from those of another. For example, the words NIKE and ADIDAS identify different traders’ goods.
In addition to this, trade marks benefit both traders and consumers. They enable the latter to select, with confidence, the goods/services they want to purchase, knowing that, because they bear the trade mark, those goods/services come from the producer from whom they want to buy the goods/services.
They also ensure that the trade mark owner benefits from the trade mark’s good name and reputation, deriving sales they may not have made if the goods/services in question did not bear the trade mark.
In most cases, a third party infringes a registered trade mark because they use, in the course of trade, a sign which is identical with or similar to a registered trade mark, in relation to goods or services which are identical or similar with those for which it is registered, such that it leads to a likelihood of confusion on the part of the public.
Put bluntly, you infringe if you use, in trade, a sign which leads to a risk that some of the relevant public might be confused into (wrongly) thinking your goods/services come from the owner of the registered trade mark, or that they are in some way commercially connected with them (e.g. they are licensed or endorsed by them).
Parodies of registered trade marks rarely lead to a likelihood of confusion amongst consumers. For example, if a comedian makes a joke on stage, parodying a well-known brand, this is quite different from using a parodied trade mark to market and sell a commercial product. No-one is confused as to the trade source of the joke!
Moreover, the purpose of a parody is to evoke an existing work, while being noticeably different from it, and to express humour or mockery. For example 'Enjoy Cocaine' – a parody of 'Enjoy Coca-Cola'. The purpose of a parody isn't to create confusion as to the trade source of a trader’s goods/services.
But parodying a registered trade mark can sometimes be contrary to section 10(3) of the Trade Marks Act 1994.
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This section provides that a person infringes a registered trade mark if they use in the course of trade, in relation to goods or services:
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In other words, the sign used for the purpose of the parody either free rides off the reputation of the registered trade mark, or dilutes the distinctiveness of the registered trade mark, or tarnishes the reputation of the registered trade mark.
Free riding typically involves the image of the earlier trade mark, or the characteristics that it projects, being transferred to the goods/services covered by the later sign, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. What must be established is some sort of boost given to the later sign, by its link with the earlier mark with a reputation.
Infringement will arise where a party seeks to ride on the coat-tails of the earlier mark with a reputation, in order to benefit from the power of attraction and the reputation of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the earlier mark in order to create and maintain the mark's image.
Dilution is caused when the earlier trade mark's ability to identify the goods/services for which it's registered and used as coming from the proprietor of that mark is weakened, since use of the later sign leads to dispersion of the identity and hold upon the public mind of the earlier mark. This requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, due to the use of the later sign, or a serious likelihood that such a change will occur in the future.
Tarnishment arises where use of the later sign will sully, degrade, debase, or reflect badly on the earlier trade mark, and this negative association is real and not fanciful. The classic example is CLAERYN for gin and KLAREIN for detergent. No-one likes to be reminded of a detergent when drinking their favourite tipple. Also, 'VISA' being used as the brand name for a range of condoms.
A good example of a commercial product being sold bearing a parodied trade mark can be found in the USA.
The facts are as follows. The defendant is selling a dog toy designed to ‘evoke’ the look of a bottle of Jack Daniel’s whiskey.
On the toy, the name 'Jack Daniel’s' is replaced with 'Bad Spaniels', and the descriptive phrase 'Old No. 7 Brand Tennessee Sour Mash Whiskey' is replaced with 'The Old No. 2 On Your Tennessee Carpet.'
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Jack Daniel’s Properties considers that such acts constitute infringement of its US registered trade marks for the Jack Daniel’s bottle design and for various of the words and graphics on the label. It asserts that Bad Spaniels have infringed the marks by leading consumers to think that Jack Daniel’s has created, or is otherwise responsible for, the dog toy, and that Bad Spaniels has diluted the marks, by associating the famed whiskey with dog excrement.
Some US commentators consider that Jack Daniel’s legal claims threaten free speech, by discouraging the use of brand names and product trade dress which mocks or laughs at well-known trade marks. Others say that the Bad Spaniel’s product tarnishes Jack Daniel’s whisky brand.
So how would this case play out in the UK, assuming Jack Daniel’s Properties has registered the same trade marks in the UK? Would such use constitute registered trade mark infringement?
It's the writer’s view that it could, because even if UK consumers are not confused into (wrongly) thinking the Bad Spaniels product comes from Jack Daniel’s, the product arguably tarnishes the latter’s trade marks.
The power of attraction of the Jack Daniel’s brand could be reduced, due to the fact that the Bad Spaniels product possesses a characteristic or quality which is liable to have a negative impact on the image of Jack Daniel’s - namely, the indirect reference, on the labelling of the Bad Spaniel’s product, to dog excrement. That’s not something anyone considering buying an alcoholic drink wants to think or be reminded about.
Arguably, the Bad Spaniel’s product also free rides off Jack Daniel’s trade marks, with sales of the Bad Spaniels’ product likely being boosted by its link and, allegedly humorous, association with Jack Daniel’s well-known trade marks.
Not all parodies of a registered trade mark are infringements. For example, a joke used by a comedian on stage, parodying a well-known brand, is in most cases unlikely to infringe.
But, if a trade mark is parodied and the parodied mark is used as a source identifier for another trader’s goods/services, and it either makes the goods/services bearing the parodied mark more attractive to consumers, or tarnishes the registered trade mark, a successful infringement claim may be possible.
For more information please contact Clare Jackman.
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