Enforce trademark and copyright laws to combat “trademark interference”

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The main trademark legislation in the UK, the Trade Marks Act 1994, makes no reference to brand jamming. A trademark owner’s best hope is to show that the activity amounts to an infringement of its trademarks under Section 10(3) of the Act. This requires a trademark owner to demonstrate, among other things, that the defendant’s activities have taken unfair advantage of its trademark or damaged its distinctiveness or reputation.

Defendant’s use of a mark’s trademark must be in the “course of trade” – that is, commercial use for the purpose of promoting the sale of defendant’s goods or services, which is usually not the case in brand scrambling. Further, the use must be “without cause,” and there is at least the risk, in some cases, that a court will find that the protection of political expression trumps trademark rights.

Fair use of a work for the purpose of parody is a defense against copyright infringement in the UK. This defense was introduced as recently as 2014 and remained untested until a High Court ruling in June 2022. This case involved characters from a well-known television comedy show in the UK, which the defendants allegedly copied in live performances as part of an interactive dining experience.

Defendant’s parody defense failed and the High Court held that a parody must not simply imitate an existing work, but must also be used as a ‘weapon’ by targeting the work itself, or a political cause or otherwise entirely separate from it, with a view to mocking, criticizing or expressing an opinion about it.

This clarity around the scope of the parody defense is welcome but, as currently interpreted, is unlikely to be helpful to trademark owners in trademark interference cases seeking to make a genuine comment. social. The High Court’s decision is subject to appeal.

Australia

In Australia, a mark can only be infringed if it is used in the course of commercial activities and to distinguish the user’s goods or services. Two key decisions, however, prove that this requirement is often fatal to trademark interference claims – and demonstrate that while the limits of the defense are not easy to define, the parody copyright defense will also help an alleged infringer who has used a protected logo in a parody campaign.

In 2019, the National Roads and Motorists Association (NRMA) filed a lawsuit against the construction, forestry, marine, mining and energy union after the unions launched a campaign that featured an image of a sinking ship with the letters NRMA alongside the words “Don’t let wages sink to the bottom of Sydney Harbour”. The NRMA sued for trademark infringement, misleading and deceptive conduct and harmful falsehood in relation to the use of NRMA lettering.

Although the use of NRMA lettering was found to be deceptively similar to a number of NRMA trademarks, the use was not found to be trademarked as the unions did not provide service to their members through the campaign and were not providing the same class of services.

The court said that the use of marks in connection with different goods or services may still be infringing when the notoriety of the registered mark is such that a link is likely to be established between the allegedly offensive use and the owner of the mark. the registered mark. But he said it was unlikely that a link would be made between the goods and services for which the unions used the mark and the NRMA, given that the unions had used the mark in a derogatory manner.

The court found that the use of the logo was not in commerce or commerce and that the context of the use made it unlikely that a reasonable person would be misled into thinking that the NRMA had approved the use of the logo by the unions.

In 2021, Australian energy company AGL sued Greenpeace over its use of AGL’s logo and branding in a campaign called “Australia’s Greatest Liability”. Greenpeace has largely evaded responsibility by relying on the parody and satire of the Copyright Infringement Defense, where a satirical feel has been embraced by creating a “corporate look”, mimicking the guidelines of AGL brand. Any use of a copyrighted work for the purposes of parody or satire must always be fair based on the factors set out in the law.

The court held that the use was fair, for non-commercial purposes, and given that Greenpeace was not a competitor of AGL in the marketplace. Nor did Greenpeace infringe AGL’s trademark rights because it did not use the AGL logo “as a trademark” because Greenpeace did not use the logo to promote goods or services, let alone services for which AGL marks were registered. The court held that it would be clear to consumers that Greenpeace was using the mark to identify AGL as the subject of criticism.

South Africa

In 2005, the activist company Laugh it Off Promotions produced and sold t-shirts featuring well-known brand corruptions. An example included the use of the trademark “CARLING BLACK LABEL BEER” replacing the original words with “BLACK LABOR WHITE GUILT”.

South African Breweries (SAB) filed a complaint under the anti-dilution provisions. In response, Laugh it Off argued that there was no likelihood of damaging the reputation of the brands and that furthermore it was exercising its constitutional freedom of speech. To succeed in the allegation of trademark dilution, SAB had to demonstrate the unauthorized use of the trademark in the course of business in connection with goods or services, where the trademark is identical or similar to a trademark notorious and that the use would take unfair advantage of this notoriety or damage the reputation of the mark.

In the lower courts, SAB prevailed in its argument that the t-shirts would harm its brand reputation, and by selling the t-shirts, Laugh it Off was using the similar mark in business life. However, the Constitutional Court held that SAB had to prove the likelihood of economic or material harm, in this case an impact on the brand’s selling power rather than its dignity, which it did not do. .

As there was no parody defense against infringement under South African law, the parody nature of the t-shirts was considered in the context of the defense of freedom of expression. Balancing the importance of protecting intellectual property rights with freedom of expression, the Constitutional Court pointed out in obiter that allowing the use of brand dilution against non-competing parodiers would allow it to act as a law. on defamation and to chill public discourse by encouraging censorship.

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Based on these examples, companies have had only limited success against brand jamming. An important thing to remember is that companies need to gather evidence to prove copyright ownership in addition to trademark rights to ensure quality. The examples also make it clear that international copyright infringement laws, often coupled with constitutional protections for free speech, provide effective defenses for those who participate in social commentary.

A version of this article first appeared in World Trademark Review July 2022. The article was co-authored by Odette Gourley and Grace Griffiths from Corrs Chambers Westgarth with Gill Dennis and Tom Nener contributing to the British section.

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