New Directions in Trade Mark panel 2

New Directions in Trade Mark Law

Panel 2

‘A Parody exception: Why Trade Mark Owners Should Get the joke.’

by Sabine Jacques

1. Introduction

Defining trademark parody is challenging. Parody refers to the reproduction of protected signs while simultaneously distancing itself from the elements reproduced, to comment upon the sign or to rely on the concept behind the sign for comic or critical effect. Inherently, parody requires balancing the interests of right-holders and the public to define the limits of the scope of protection granted to right-holders under copyright, passing off and trademark law.

This blogpost analysis the current legal framework under EU/UK law and advocates that trademark law should provide more room for the creation of parodies. By adapting the legal regime to resolve tensions between the marketing and expressive spheres, it is believed that trademark legislation will continue to provide effective protection for the other trademark functions, while reinforcing stakeholders’ faith in the system.

2. Trademark infringement

Harmonised within the EU, two provisions most likely impact the creation of parodies: articles 5(1)(b) and 5(2) of the trade mark directive (TMDir)[1].

Under article 5(1)(b) TMDir, trademark owners have the exclusive right to control any use of an identical/similar sign made in the course of trade in relation to identical/similar goods which is likely to confuse an average consumer as to the origin of those goods. Accordingly, parodies created for solely non-commercial purposes should be lawful because these do not occur ‘in the course of trade’, whereas trademark parodies bearing a commercial character like the reprinting of the parody on objects such as t-shirts could be seen infringing. Similarity combines visual, phonetic and conceptual analysis of the signs and the goods or services analysed through the eyes of the average consumer. Finally, the use must create a likelihood of confusion. Traditionally, this requirement implies that the average consumer believes that the products bearing the unauthorised sign are commercially linked in some way to the trademark owner. Thus, most parodies should avoid infringement. Indeed, the nature of parody is to copy the main features of a registered sign while concurrently relying on the public’s recognition of the original without creating confusion in the consumer’s mind. While the current interpretation of this provision favours the creation of parodies, the situation is reverse when parodying a trademark with a reputation.

Successful parodies often reproduce famous marks multiplying the risks of infringement. Article 5(2) broadens the scope of protection for trademarks with a reputation. This provision does not require that the use is made in the course of trade or likelihood of confusion. Trademark owners simply have to establish reputation, a connection between the use and the protected sign for the average consumer and some kind of damage or likelihood thereof. Such use must be without due cause and must take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark. The CJEU[2] interpreted the requirement of damage as including: ‘a transfer of the image of the mark or of the characteristics which it projects to the goods identified’[3]. Therefore, these anti-dilution provisions have the potential to extend to non-commercial uses including parody[4]. The interpretation of this provision allows greater protection for trademark owners to control parody uses because most of these allegedly infringing uses will be found as diluting the trademark[5].

3. Passing off

Trademark owners of famous marks can also rely on the tort of passing off to censor the parody. Designed to preserve the goodwill of a trader against misrepresentation, this tort applies regardless of whether marks are registered or not. Essentially, this tort requires right-holders to prove three elements: reputation or goodwill, misrepresentation and damage to its goodwill.

While trademark owners might establish goodwill, they will still have to prove misrepresentation. Thus, parodists must represent their goods/services for being those of the claimants. Hence, a simple connection does not suffice. But similar to trade mark legislation, the very nature of parody requires the absence of confusion. Following this interpretation, the parody should prevail over the interests of the trademark owner[6].

4. A specific exception

Facing the absence of a specific exception and the current broadening of scope of protection of right-holders, parodists allured to the idea of invoking arguments based on freedom of expression considerations[7]. Yet, contrary to what happens in other EU jurisdictions[8], English courts appear reluctant to justify the parody use of a trademark by the application of freedom of expression[9].

Introducing a parody exception would offer greater legal certainty for parodists. The European Parliament proposed an amendment to current trademark legislation through the opening of permitted referential uses to include specifically parody purposes (Amendments 15 and 33). Despite the absence of statutory definition, this blogger suggests to refer to the interpretation of the parody exception under copyright law.

According to the CJEU, a parody must: ‘evoke an existing work while being noticeably different from it,’ and ‘constitute an expression of humour or mockery’[10]. It seems reasonable for trademark parodies to follow the same definition. Therefore, parodists should have a humorous intent and avoid confusion in the average consumer’s mind. The application of the second requirement should be straightforward, given that it mirrors familiar concepts of trademark law. The humorous requirement will be slightly more problematic. To preserve the numerous facets of parody, this requirement should be interpreted broadly as an absence of malice. It is reasonable to require parodists to refrain from disparaging the trademark owner or the goods covered by the trademark.

Yet, trademark owners will argue that any parody of their protected mark will denigrate it, and indeed it is reasonable that a trademark owner should retain a right to redress against a parody which damages a trademark’s reputation to the extent that it impacts on consumer behaviour. This might not be a conscious shift, but current and future consumers might be less inclined to buy the trademarked products because of the parody.

5. Conclusion

Current trademark law affords some space to accommodate parody. However, as EU trademark law moves towards stronger protection for trademark owners, a more robust EU framework is necessary to best preserve freedom of expression. A guarantee of the right to exercise this fundamental right requires a specific exception to be introduced, but this addition would also protect fair competition. Without adequate legislative limitations, there is a real risk that trademark protection against dilution becomes ‘absolute’. Yet, neither trademark rights nor freedom of expression are absolute. Hence, a balance is needed which would be eased by the introduction of a specific exception.

Deckmyn provides guidance for the interpretation of the exception to balance the competing interests in play. The most important requirement lies in the absence of confusion. Consumers should be under no doubt that the parody has no association or endorsement from the trademark owner. Requiring humorous intent from parodists will further preclude any malicious actions from being covered by the exception. Finally, the parody exception should not be absolute. Given that the exception is justified by freedom of expression, it is reasonable to require it to respect the limits inherent in its own justification.

[1] Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (Codified version), O.J. L 299, 25-33; these provisions are implemented in the UK in section 10(2)(b) and 10(3) UK TM Act 1994.

[2] Court of Justice of the European Union (‘CJEU’).

[3] C-487/07 L’Oréal SA v. Bellure NV [2009] ECLI:EU:C:2009:378.

[4] Section 10(3) still requires the use in the course of trade adding protection for the preservation of parodies. See Unilever Plc v Griffin & Anor [2010] EWCH 899 (Chy).

[5] Ate My Heart Inc v Mind Candy Ltd [2011] EWHC 2741 (Ch).

[6] See blogpost ‘Battle of Trumpton: parody, or protection of kippers’ (IPKat, 2014) available at http://ipkitten.blogspot.co.uk/2014/12/the-battle-of-trumpton-parody-or.html

[7] Article 10 ECHR; section 12 UK Human Rights Act 1998.

[8] Such as France see Danone, Esso and Areva decisions.

[9] Miss World Ltd. v Channel 4 Television Corp [2007] EWHC 982 (Pat).

[10] C-201/13 Johan Deckmyn and Vrijheidsfonds VZW v Helena Vandersteen and Others [2014] ECLI:EU:C:2014:2132.

50 SHAPES TO SHRED: REGISTRABILITY OF A GUITAR BODY AS A TRADE MARK

by Michel Olmedo

Trademark regulations all around the world tend to establish a fairly similar concept of trademark and what could be registered as a trademark. In Spain, Law 17/2001 on Trademarks, on article 4.1 sets forth that a trademark shall be “any sign able to be represented graphically and used to distinguish in the market the goods or services of one company from those of other companies”. Among these signs, article 4.2 contains an open list of types of signs, reflecting on the letter c that “three-dimensional forms including wrappers, packaging and the shape of a product or its presentation” would be included. In this sense, section 2 of the Lanham Act, Section 1(1) from the Trade Mark Act 1994 and article 4 from the Council Regulation (EC) No 207/2009 on the Community trade mark, to name a few, they all set forth similar provisions.

Taking into consideration all the above mentioned, it could be assumed that the body of a guitar could be treated as the “shape of a product” and thus, could be subject to registration as a trademark for Class 15 of the Nice Classification (comprising, among other, electric guitars), given that it allows the product to be differentiated by the consumers from those offered by other manufacturers.

In the US, one of the most famous cases in this area was brought up more than ten years ago and took almost six years to be settled by the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO), involving the filing for registration of three guitar bodies by Fender Musical Instruments Corporation, one of the major manufacturers in the industry[1].

[2]

In this case, more than 20 oppositions were filed against the trademarks proposed by Fender, out of which 18 made it to the TTAB. The major claim of the other manufacturers was that these shapes were not distinguishable by themselves and could not be associated with the company, and that Fender had lost their chance to protect these designs many years ago, having now become generic in the music industry. To support their allegations, they provided excerpts and cut-outs from guitar magazines expanding for more than 30 years, containing pictures of guitars shaped almost identically to the guitar bodies supplied with Fender’s application, what proved that the applicants did know of the existence of these similarly shaped guitars and did nothing to protect their products.

One very interesting point of their claim, supported by various testimonies, was that Fender never acted against the bodies of guitars used by their competitors, but only against the use of similar headstocks[3], what constitutes failure to police and safeguard their trademark, and does not compute with the due diligence of a trademark owner.

The TTAB decided that, effectively, the trademarks were generic and, thus, could not be granted protection under trademark law. This opinion has become precedent of the TTAB, establishing that genericness could be avoided if enough evidence on acquired distinctiveness was provided.

In the same line of reasoning, the Boards of Appeal of the Office for the Harmonisation of the Internal Market (OHIM) have issued some decisions regarding registrability and validity of trademarks consisting solely on the shape of the body of an electric guitar for Class 15 of the Nice Classification.

On one hand, there is the case of the “Beast” guitar[4], manufactured by B.C. Rich, that seeked registration as a Community Trademark but was deemed non-distinctive by the trademark examiner, as it was considered a regular design for “pointy” guitars, and unidentifiable solely by the shape.

The First Board of Appeal upheld the examiner’s opinion and denied the registration, providing a list of guitar body shapes that were very similar to the applicant’s and pointing out that consumers in this particular market are not only guitar virtuosos, but also those that are currently learning their first chords, by saying, on paragraph 55, that “The Board is ready to accept that Eric Clapton or Elvis Costello are able to spot a guitar’s make from far away and buy one by just looking at the body, not the manufacturer’s name on it. But this is the exception, not the rule. Ordinary guitarists (…) would look for something more tangible than just the appearance of the guitar in order to distinguish it from another make.”

On the other hand, there have been cases where registration of a guitar body has been granted. This was the case of the now void CTM No 8 843 311, registered by Gibson Brands Inc, depicting the shape of the famous Explorer model for three Classes, among which Class 15 was included.

In this case[5], one year after registration was granted, another guitar manufacturer filed a request for a declaration of invalidity against this CTM, arguing that it was not compliant with Article 7(1)(b), (d) and (e)(i) CTMR. The Cancellation Division observed (and the First Board of Appeal later agreed[6]) that the shape of the product, if it is considered to be within the ordinary shapes of the kind, will not function properly as an origin indicator, and it could only be asserted by means of “acquired distinctiveness”. In this case, as the cancellation applicant supplied consistent evidence of guitars shaped with very similar features to the Explorer and, as enough evidence of secondary meaning was not provided by Gibson, first the Cancellation Division, and then the First Board of Appeal, decided that the trademark should be cancelled for Class 15.

To sum up all the abovementioned, the body of a guitar could be subject to registration under Class 15, provided it allows the consumer to differentiate it from the guitars manufactured by other companies. Considering how limited the configuration options for a versatile guitar are, and that even the “Beast” was deemed non-distinctive, it seems highly unlikely for any trademark consistent solely of the body of a guitar to get through the registration proceeding, and even if it did, it would be quite hard for the applicant to supply sufficient evidence, should there be a request for declaration of invalidity.

[1] Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corporation, 94 USPQ2d 1549 (TTAB Mar. 25, 2009)

[2] The shapes shown above correspond, respectively, to the Stratocaster, Telecaster and Precission Bass models.

[3] Id. See pages 38 – 42.

[4] Case R 1035/2004-1

[5] Cancellation Proceedings No 5 625 C

[6] Case R 1333/2013-1

Branding Competition: What foreign-language marks mean for international businesses

by U. Shen Goh

As far back as 1975, The Coca-Cola Company applied for four Chinese-language marks in Canada. When it came time to renew the Chinese-language marks in Canada in 1992, however, The Coca-Cola Company abandoned all of them. Will its behaviour change again in light of the growing trend to engage in “brand extension” and “cross-branding” with foreign-language marks in order to access new untapped markets? This blog analyzes how foreign-language marks are and should be treated in Western trademark registries and court proceedings. Although the focus is on how Chinese-language marks are treated administratively and judicially in Canada, the principles extrapolated therefrom can apply to all languages in all countries.

The first challenge that The Coca-Cola Company will face in re-registering its Chinese-language marks is the fact that the database automatically classifies all foreign-language marks not using Latin/Roman letters as design marks. For example, the English-language mark COCA-COLA would be considered a word mark, which can be used in any font, size and colour from that registered, but the equivalent Chinese-language mark 可口可樂 would be considered a design mark, which must be registered-as-used and used-as-registered. Since foreign-language marks not using Latin/Roman letters can be written in a variety of ways, this leads to a discrepancy where English-language marks need to be registered only once with minimal cost to receive full protection, but the equivalent Chinese-language marks need to be registered multiple times with increased costs to receive the equivalent protection. Failure to do so could lead to unfavourable findings of lack of use in expungement proceedings or lack of confusion in infringement proceedings. The solution is to transcribe foreign-language marks not using Latin/Roman letters. Using the official phonetic system adopted in 1982 by the International Organization for Standardization, the Chinese-language mark可口可樂 can be transcribed as KE3 KOU3 KE3 LE4.

Such a minor solution will have three major benefits:

It will solve the inefficiency of the database by allowing foreign-language marks to be classified as word marks and to be filed/searched alphabetically in the same manner as English-language marks.

It will address the incongruity with case law, which currently recognizes foreign-language marks as meaningful words and not just inarticulate designs. The case law no longer supports the database’s practice of automatically classifying all foreign-language marks not using Latin/Roman letters as design marks, as it now acknowledges that the average Canadian consumer may have linguistic knowledge of the foreign language used in such marks.

It will remove the inconsistency with international trade, as the discrepancy between English-language and foreign-language marks violates the most-favoured nation and national treatment principles.

The second challenge that The Coca-Cola Company will face with respect to Chinese-language marks is the fact that the case law still requires evidence of linguistic knowledge. This is a problem because such evidence changes constantly depending on immigration, international trade, brand extension and cross-branding. For example, The Coca-Cola Company would have difficulty providing such evidence with respect to its national commercials in multiple languages, as no average consumer would understand so many languages. While an easy solution would be to customize the commercials for specific linguistic groups, such fragmentation would defeat the global spirit of community which the multilingual commercials sought to foster. On the opposite end of the spectrum are small start-ups like Aboriginal businesses that target a national market. Given their small linguistic populations, such businesses could never prove that a significant number or percentage of their consumers understand their Aboriginal-language marks. It is ironic that the economic gains associated with a trademark should cause the linguistic losses of the same trademark. The solution is to assume linguistic knowledge for foreign-language marks as is assumed for English-language marks.

Such a solution will mean four effects:

Foreign-language marks should be translated when assessing for distinctiveness. Since English-language marks are registrable only if they are distinctive, it follows that traders should not do in a foreign language what they cannot do in the English language.

Foreign-language marks should not be translated when comparing for confusion. Although administrators and judges need to translate foreign-language marks in order to understand and discuss them, the comparison should be done based on the foreign language and not on the English translations, as that can affect the results in different findings. In this regard, the American doctrine of foreign equivalents and Canada’s developing test for confusion involving foreign-language marks initially err in requiring evidence of linguistic knowledge instead of assuming it, and further err (and contradict themselves) in basing the comparison on the English translations and not on the foreign language.

Foreign-language marks should not be translated when comparing for confusion with a transliteration. Since English-language marks do not expand automatically into claims for their homonyms, and traders who choose to spell an English-language mark a certain way cannot rely upon the law to act as an insurer against other spellings, the same rational should apply to a trader who decides to use a foreign-language mark and not use any or all of its possible transliterations.

Foreign-language marks should not be translated when comparing for confusion with a translation. Since English-language marks do not expand automatically into claims for their synonyms, and traders who choose to express an English-language mark a certain way cannot rely upon the law to act as an insurer against other meanings, the same rational should apply to a trade who chooses to use a foreign-language mark and not use any or all of its possible translations.

International businesses were once too slow to recognize the value of Chinese-language marks in China. They are now too slow to recognize the value of Chinese-language marks in the West. In this era of “brand extension” and “cross-branding” with foreign-language marks in order to access new untapped markets, The Coca-Cola Company should learn from its experiences in China and take the same precautionary measures in the West. This becomes even more pressing in light of how foreign-language marks are and should be treated in Western trademark registries and court proceedings.

For a comprehensive discussion, see U. Shen Goh, “Branding Linguistics: Or What Coca-Cola and Chinese Bakeries Have in Common” (2014) 27:1 IPJ 65-116 and “Branding Competition: What foreign-language marks mean for International Businesses” (Forthcoming 2015) Volume 15 of Asper Rev of Int’l Bus and Trade Law.