Click here to view image
(Unfortunately, not for human consumption. Some of the treats available from “Snaks 5th Avenchew”.)
They say dogs are (wo)man’s best friend, but apparently the team over at Saks 5th Avenue missed the memo.
The luxury U.S. department store had a less than friendly reaction to discovering a small online business retailing specialty canine and equine treats under the name “Snaks 5th Avenchew” (get it?). While “Snaks” owner Carrie Sarabella thought the parody was simply a humorous homage to her favourite retail giant, Saks weren’t keen on horseplay. Instead, Saks issued a cease and desist letter to the “Snaks” owner, claiming her business name infringed on Saks’ registered trade marks. The letter apparently demanded “Snaks” change its name within a month, and threatened to commence litigation if they refused. Carrie Sarabella lawyered up quick-smart, and her attorney was able to convince Saks to withdraw their allegations, and to agree not to pursue the matter.
As it turns out, purveying pooch products using a parody of existing trade marks isn’t a new trick.
In 2002, Tommy Hilfiger’s U.S. trademark suit against a novelty “pet perfume” called “Timmy Holedigger” was unsuccessful. Then in 2007, a federal U.S. appeals court unanimously rejected Louis Vuitton’s claims that the “Chewy Vuiton” plush toy infringed the brand’s registered marks. In both of these cases, the courts held that the complainants had failed to show any likelihood of confusion between the products in question and the owners of the registered marks because they were obvious parodies. Although Saks and “Snaks” never got their day in court, it seems likely that their case would have received similar treatment.
While Ms Sarabella is no doubt pleased the U.S. courts share her sense of humour, we wondered how the joke would have translated here in Australia.
Saks have a number of registered trade marks in Australia, including the phrase ‘Saks Fifth Avenue’ and the mark below:
Click here to view image
“Snaks” doesn’t have any registered trade marks, but their logo is similarly stylish:
Click here to view image
Under Australian law, parody is not in itself a defence to trade mark infringement (though “fair dealing” for the purpose of parody is a defence to copyright infringement).
However, in defence of an infringement claim, “Snaks” might argue that the obvious satirical nature of “Snaks 5th Avenchew” weighs against a finding of deceptive similarity with respect to “Saks Fifth Avenue”.
Even if deceptive similarity was established, there is an exception to trade mark infringement if the use is in relation to goods or services similar or closely related to (but not the same as) those covered by the registered trade mark and it can be established that a particular use did not, and was not likely to, deceive or confuse consumers as to the source of the mark (see section 120(2) of the Trade Marks Act 1995 (Cth)). This is a similar argument to the one upheld by the U.S. courts in the “Timmy Holedigger” and “Chewy Vuiton” decisions discussed above.
However, this exception does not apply where the use is in relation to goods or services which are actually covered by the registration. In other words, if Saks had an Australian registration covering pet food products or online retailing, this exception wouldn’t take “Snaks” very far. Even if the use here did fall into section 120(2) territory, “Snaks” would need to convince a court that the distinction between Saks and “Snaks” was clear to consumers. A parody is, essentially, a “cheeky reference” – it should be clear that there is no endorsement or connection between the owner of the original mark and the product in question. A bad joke could increase the likelihood of confusion as to the source of the mark, and risk breaching trade mark laws.
“Snaks” makes some fancy treats (check out their Facebook for more drool-worthy pictures) and Saks is a high-end retailer. However, “Snaks” currently only use their mark in relation to animal food products, which are quite distinct from the clothing and department store services Saks have registered their marks in relation to. Additionally, the use of the word “avenchew” in place of “avenue” is a clear indicator of the type of product “Snaks” are retailing (puppies might chew shoes, but the average human customer probably isn’t going to be confused between these and Saks’ clothing line). On that basis, we think its unlikely consumers would be confused about whether “Snaks” were associated with Saks.
The case is also interesting as it’s yet another instance of an intellectual property battle between a globo-giant and a small business which has worked out in the little guy’s favour. Last year, we reported on the “Starbucks v Charbucks” litigation. While we weren’t convinced that an Australian court would have come to the same view in that particular case, we are happy to note that the importance (and value!) of intellectual property is being respected at all levels of business.