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Parody or trademark infringement?
Parody or trademark infringement?

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It is increasingly common to find creations that refer to recognised trademarks on social design platforms.

These environments allow designers and creators to showcase their personal and professional work. The key to success is to differentiate oneself and draw the public’s attention.

Today we present a proposal on Behance and explain its legal implications in the event that it had been carried out in a real campaign.

Portfolio image of user Miri Elvin on the Behance.net platform

The more renowned a trademark is, the more likely it is to be parodied because, due to its fame, the consumer public will better understand the message it intends to convey. This, however, can cause many trademarks to be diluted and discredited. This is the case of one of the winning creations of the Winner of Azerbaijan Design Award, in which the “TABASCO” hot sauce brand would be using the swoosh of the American brand Nike and the basis of its slogan to promote its product.

Would this then be exploitation in the form of a parody or would it be trademark infringement?

Parody is a limitation to copyright recognised in article 39 of Royal Legislative Decree 1/1996, of 12 April, which approves the consolidated text of the Intellectual Property Law.
The parody of a disclosed work shall not be considered a transformation that requires the consent of the author, provided that it involves no risk of confusion with that work and does no harm to the original work or its author”.

Therefore, the possibility of making a parody without the consent or authorisation of its creator is set out, provided that it involves no risk of confusion and does not harm the original work or its author.

However, the exception of parody is not set out in our trademark legislation, and therefore, in the event of transforming a work that is registered as a trademark, which is the case at hand (Nike has the registration of its claim “JUST DO IT” and the swoosh), it could be an infringement provided that it is used in commercial transactions as a trademark and the business origin of the products and services is not differentiated..

Furthermore, Spanish regulations grant reinforced protection to renowned trademarks, extending their protection to products or services where the greater their differences, the greater the degree of knowledge of the trademark.

In this regard, article 34(2)(c) of Law 17/2001, of 7 December, on Trademarks establishes:

“2. Notwithstanding the rights acquired by the proprietors before the filing date of the application for registration or the priority date of the registered trademark, the proprietor of said registered trademark shall be empowered to prohibit any third party from using any sign related to his products or services without his consent in economic transactions, when: :

c) The sign is identical or similar to the trademark, regardless of whether it is used for products or services that are identical or similar or not to those for which the trademark is registered, when it has a reputation in Spain and, with the use of the sign made without just cause, an unfair advantage of the distinctive character or reputation of the trademark is obtained or said use is detrimental to said distinctive character or said reputation”.

Given the foregoing, a parodied trademark is used without consent within the framework of a commercial activity, creating a risk of confusion and/or association, as well as damaging the distinctive character or reputation of Nike, this could be a case of infringement of trademark rights and not a simple parody.

However, if the use of the parodied trademark does not identify products or services, in other words, it is not used as a trademark or is not derogatory, it may not violate the rights of the trademark proprietor.

In short, the parody of trademarks is not illegal in all cases and must be based on the circumstances of the given case.

Zahira Castrillo
National Trademark Manager at PONS IP

LEGAL NOTICE PRESS ARTICLES REGULATED BY CEDRO:
Some of the journalistic articles included in this website are protected by Copyright. If you wish to carry out the reproduction, distribution, public communication or transformation, in any medium and in any way, of any article with the employees of your company or with external personnel, contact CEDRO to obtain your own authorization (licenses@cedro.org /cedrocat@cedro.org)

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