TRADEMARK PARODY DEFENCE UNDER EU LAWS

Overview of Trademark Laws in the EU

◦ Trade mark law of the European Union (EU) is governed by European Union law together with national
law of the member states of the EU.
◦ The main EU regulations concerning trademarks are as follows:

The EU Trade Mark The EU Trade Mark

Regulation - 2017/1001 Directive - 2015/2436
(EUTMR) (EUTMD)
Parody Defense in EU Trademark Laws

EU legislative texts did not provide for a parody

exception in trade mark law.

Nevertheless, the EUTMR and EUTMD expressly

refer to freedom of expression and underlines that the
use of a trade mark must respect ‘fair and honest trade
usages’.
Recital 21 in EUTMR
◦ (21) The exclusive rights conferred by an EU trade mark should not entitle the proprietor to prohibit the use of
signs or indications by third parties which are used fairly and thus in accordance with honest practices in
industrial and commercial matters. In order to ensure equal conditions for trade names and EU trade marks in
the event of conflicts, given that trade names are regularly granted unrestricted protection against later
trademarks, such use should be only considered to include the use of the personal name of the third party. It
should further permit the use of descriptive or non-distinctive signs or indications in general. Furthermore, the
proprietor should not be entitled to prevent the fair and honest use of the EU trade mark for the purpose of
identifying or referring to the goods or services as those of the proprietor. Use of a trade mark by third parties to
draw the consumer's attention to the resale of genuine goods that were originally sold by or with the consent of
the proprietor of the EU trade mark in the Union 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. 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. Furthermore, this Regulation should
be applied in a way that ensures full respect for fundamental rights and freedoms, and in particular the freedom
of expression.
Recital 27 in EUTMD
◦ (27) The exclusive rights conferred by a trade mark should not entitle the proprietor to prohibit the use of
signs or indications by third parties which are used fairly and thus in accordance with honest practices in
industrial and commercial matters. In order to create equal conditions for trade names and trademarks against
the background that trade names are regularly granted unrestricted protection against later trademarks, such
use should only be considered to include the use of the personal name of the third party. Such use should further
permit the use of descriptive or non-distinctive signs or indications in general. Furthermore, the proprietor
should not be entitled to prevent the fair and honest use of the mark for the purpose of identifying or referring
to the goods or services as those of the proprietor. Use of a trade mark by third parties to draw the consumer's
attention to the resale of genuine goods that were originally sold by, or with the consent of, the proprietor of the
trade mark in the Union 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. 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. Furthermore, this Directive should be applied in a way
that ensures full respect for fundamental rights and freedoms, and in particular the freedom of expression.
Compare with EU Copyrights Law
◦ The exception of parody enshrined in Article 5(3)(k) of the 2001/29/EC directive on the harmonization of
certain aspects of copyright.
◦ Further clarified by the Court of Justice of the European Union in a ruling in Deckmyn (2014)
Balancing the rights in EU Trademark
Law?
So far, the CJEU has not delivered any judgment
concerning the concept of parody in trademark
law
Further, the CJEU has not rendered any decision
concerning fashion law and parody
Non-Commercial Parody
Areva v. Greenpeace (2008) – French Supreme Court
◦ Facts:
 Greenpeace published caricatures of “Areva” trade marks
on its website. The caricature was used to illustrate a
campaign against the environmental policy of the company.
 Areva sued for trademark dilution.
◦ Held:
 Greenpeace had “acted in accordance with its purpose and
in general and public health interest, by means
proportionate to that purpose, and it had not exceeded the
right to freedom of speech”
Non-Commercial Parody
Nadia Plesner v. Louis Vuitton (2010) – Court of The
Hague
◦ Facts:
 Plesner made the work “Simple living”, which showed an
African child holding a handbag and a Chihuahua dog
dressed in pink.
 Louis Vuitton sued and invoked Article 1 of the Protocol of
the ECHR (the protection of property, including design
rights)
◦ Held:
 Court in Hague decided that it was not infringing and “the
illustration is to be regarded as a lawful statement of the
artistic opinion of Plesner.”
Commercial Parody
Lila Poskarte (2005) – Germany Federal Court
◦ Facts:
 Milka produces and sells chocolate. Owner of the IR trademark
"Milka" registered with protection extension and the German color
trademark no. 2 906 959 “Lila.”
 A postcard company sells cards which has a violet base color and
mentioned the word “Milka.”
 Milka sees the postcard as an encroachment on its trademark
rights.
◦ Held:
 If a well-known trademark is used in a witty and humorous way in
the presentation of a product (here: reproduction on a postcard),
“It is calm above the tree tops, Somewhere a cow is the unfair use of the distinctive character (exploitation of
bellowing. Moo!” attention) of the trademark in suit can be ruled out on the basis of
artistic freedom according to Art. 5 (3) GG being.
(Rainer Maria Milka)
Commercial Parody
Seri Brode v. Procter and Gamble France (1998) –
Paris Court of Appeal
Facts:
 A T-shirt manufacturer produced a T-Shirt depicting Mr.
Clean, a trademark registered by Procter and Gamble
France.
 Procter and Gamble France sued and claimed that the use is
unlawful and denigrated the trademark.
◦ Held:
 The caricature was not used by the defendant ‘only to mock
or make consumers smile but also with the commercial
intent of benefiting from the trade marks to sell its own
products’ and such use denigrated the trademark.
Conclusion
Does trademark parody receive
sufficient protection under EU
Law ?

Compared to the USA?