This article was originally published in Intellectual Property Magazine and can be accessed at www.intellectualpropertymagazine.com.

They say that imitation is the highest form of flattery, but for trade mark owners who find themselves the subject of a parody, it may be hard to find the compliment. Whilst parody can be a fair use exception to copyright infringement in the United Kingdom and the European Union, there is currently no similar defence for trade mark infringement in those jurisdictions. Should other businesses and traders have the freedom to parody trade marks without committing infringement, or would such a parody exception unduly impinge on the rights of trade mark owners?

In everyday use, the concept of parody is most commonly associated with a humorous, exaggerated or satirical imitation of an existing artistic work or its creator. The word ‘parody’ may bring to mind any of the countless YouTube videos made in the style of a popular song with slight lyrical changes for comedic effect, or comedy sketches based on well-known television shows or movies. Following recent reforms to UK copyright laws, these examples could deflect against claims of copyright infringement through the defence of parody, which preserves a delicate balance between the rights of copyright holders and the freedom of expression of parodists. But when parodies take aim at well-known trade marks as their target, such as a 'dumb' copycat of a coffee shop chain or a 'dismal' satirisation of the world's happiest theme parks, that balance becomes a much trickier exercise.

Based on the definition of parody above, the term ‘trade mark parody’ may be used to refer to the use of an amusing or sardonic take on an existing product, brand, logo, slogan or any other sign used as a trade mark. Typically, such parodies take on established, well-known marks with a reputation, often parodying the mark to communicate a mocking or critical message of the trade mark or its owner.

In the US, where a parody exception to trade mark infringement exists, Starbucks has seen itself as the butt of a number of parody jokes. Examples include a pop-up coffee shop branded “Dumb Starbucks” in Los Angeles, and drug paraphernalia under the name “Dabuccino” in the shape of the coffee chain’s famous frappuccino cups. These parodies present a difficult choice for trade mark owners: go along with the joke and avoid any negative publicity that bringing an infringement action might attract, as Starbucks did in the “Dumb Starbucks” example; or, take action to prevent a parody causing harm to the repute of a well-known mark. In the UK, artist Banksy’s “Dismaland bemusement park” exhibition in the summer of 2015 was a far-from-subtle parody of its Disneyland counterpart, featuring disturbing and politicised imitations of well-known Disney characters to explore an anti-consumerism commentary. Whilst Disney ultimately refrained from taking legal action, it is possible that Mickey Mouse & Co. may have had a claim for trade mark infringement, as there is currently no defence of trade mark parody in the UK or the EU.

The parody exception in relation to copyright was introduced into UK law through the Copyright and Rights in Performances (Quotation and Parody) Regulations 2014, which provides that ‘fair dealing with a work for the purposes of caricature, parody or pastiche does not infringe copyright in the work’. This exception takes advantage of the freedom offered to Member States of the EU by Article 5(3)(k) of the Information Society Directive. The concept of copyright parody was explored by the Court of Justice of the EU in Deckmyn v Vandersteen concerning a well-known Belgian cartoon, which was parodied by a far-right politician to criticise the mayor of Ghent. The Court established two essential criteria for parodies to fall under the exception: the parody should be close enough to evoke an existing work whilst being noticeably different from it, and that it should constitute an expression of humour and mockery.

The introduction of a parody defence into copyright law has led to calls for a similar exception to be implemented into the trade mark laws of the UK and the EU. Whilst EU law does not specifically grant this exception, Recital 21 of the recently implemented Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 now provides that:

Use of a trade mark by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters.

Arguably, this could be interpreted by the Court and the Member States of the EU to establish a parody defence in trade mark law, particularly as the Recital goes on to state that it should be applied in a way that ensures full respect for fundamental rights and freedoms, particularly freedom of expression. However, the Court held in Gillette v LA-Laboratories that use of a trade mark will not be in accordance with ‘honest practices’ if the use discredits or denigrates the mark, so it should not be assumed that this Recital opens the door for damaging or unfavourable parodies.

Advocates of a trade mark parody defence argue that the current lack of such a defence creates an imbalance in the relationships between trade mark owners, copyright holders and parodists. For example, under the present law, copyright holders could prevent a permissible parody of their works if they register their work as a trade mark. Therefore, the implementation of a parody defence in trade mark law would also protect the freedom of parodists to mock or satirise existing companies, brands or products. However, such an argument confuses the disparate public policies underpinning the laws of trade marks and copyright, and fails to recognise that implementing a parody defence in trade mark law could open the floodgates to infringement of existing trade marks made permissible by simply arguing that the infringement constitutes a 'parody'.

To assess whether there is a scope, or indeed a need, for a parody defence in trade mark law in the UK, it is first essential to examine the rights afforded to trade mark owners and to understand the policies underpinning these rights. Section 10 of the Trade Marks Act 1994 details when use of a mark will constitute infringement of an earlier mark. As trade mark parodies typically use marks which are similar, rather than identical, to existing marks, Sections 10(2)(b) and 10(3) are of particular importance.

Section 10(2)(b) provides that use of a sign in the course of trade infringes an earlier mark where the marks are similar and used in relation to identical or similar goods or services, such that there exists a likelihood of confusion on the part of the public with the earlier mark. The requirement for the sign to be used ‘in the course of trade’ means that the law already allows some room for certain trade mark parodies which are not used in a commercial activity. Moreover, as noted in the Court of Justice in Deckmyn, an absence of confusion is an essential characteristic of a successful parody – a parody should evoke, but not be confused with, the original work. However, if a trade mark parody did create a likelihood of confusion with the earlier mark, then the parodied mark would be hindered in its ability to perform its essential function of designating the goods or services of one trader from those of another. Thus, it would be inequitable to permit acts which would otherwise constitute infringement under Section 10(2)(b), simply because they are said to be a parody.

Typically, as in the Starbucks and Disney examples discussed above, trade mark parodies will often use well-known marks with a reputation. Section 10(3) of the Trade Marks Act prohibits use in the course of trade of a sign which is identical or similar to a mark with a reputation in the UK which would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark. This provision can be understood to protect the repute, investment and image associated with an established mark. Parodies generally work by evoking a connection with an earlier mark, taking advantage of that mark’s established reputation, and often manipulating the mark to communicate an idea or message which could be harmful or undesirable to the trade mark owner. A parody defence could severely limit the ability of a trade mark owner to protect their mark against these acts of infringement. When trade mark owners have worked hard and invested time and money into building up that reputation, why should the law allow parodists to take unfair advantage and get away with it, contrary to the rights afforded to trade mark owners?

Ultimately, the implementation of a fair use exception of parody in trade mark law would unduly restrict the rights afforded to trade mark owners when exploiting and protecting their marks. Whilst there may be justification for the defence under copyright law, it must be remembered that copyright and trade mark laws operate in two distinct, although often overlapping, spheres: copyright relates to creative works, whereas trade marks are typically commercial in function. Whilst freedom of expression is a vital consideration in the law of copyright, in trade mark law it should not supersede the rights of trade mark owners by enabling parodists to take advantage of existing marks. With the parody exception for copyright, further difficulty arises in the requirement that a parody must be ‘humorous’, a vague and entirely subjective criterion. If a similar exception were to be implemented into trade mark law, it could open the floodgates to make permissible acts which would otherwise constitute infringement, by arguing that the infringement is a humorous parody. Trade mark law already allows some room for parodists to push the boundaries, but implementing a specific parody exception would be a case of taking the joke too far.