Austria: Trademark Parody - Humour is ...

This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.

... subjective and, by its nature, open to dispute. It is therefore inevitable that in cases of trademark parody the question sometimes arises: When does a simple good laugh end and a trademark infringement begin?

Parody

We frequently come across not only t-shirts and posters but also designations of products which humorously modify well-known trademarks. A reputed German dictionary describes parody as "humoristic imitation"1. The term "parody" is the gist of the matter as humour is very subjective. So, how far does protection reach in cases where famous word marks are wilfully modified and given different meanings (e.g. STARSUCKS COFFEE, E$$O, iGOD or BABEWATCH), or cases where word-device marks are diversified in a more or less humorous way?

International experience shows a broad spectrum from satiric2 to critical3 to even degrading4 trademark parodies. The boundaries are not clearly definable and not every trademark parody is allowed. A weighing of interests of trademark owners and basic rights has to be made. Recently, the Austrian Supreme Court ruled for the first time on this subject5.

The Styriagra case

In this landmark case, the defendant was a producer of pumpkin seeds in the Austrian province of Styria (Steiermark) where he promoted and sold pumpkin seeds with a blue coloured coating. For these, the defendant used the designation "Styriagra", and even created a trademark using such term. Moreover, on his website, the defendant implied that the blue pumpkin seeds would effect an augmentation of lust.

The Austrian Supreme Court held that (at a minimum) there was unfair exploitation of the distinctiveness of the well-known trademark VIAGRA as the defendant used the trademark to attract the public's attention to his own product and to benefit from its reputation. The defendant's argument that it was a legal trademark parody was rejected. According to the court, the fact that the imitation may have been funny did not justify the defendant's main intention of attracting attention to the product.

As a basic principle, the court confirmed that exploitation of reputation or distinctiveness may be justified in cases where the imitation can be seen as an artistic work or a contribution to social discourse. However, this justification does not apply in cases where the exploitation of the reputation of a trademark is predominantly used for the sale of goods or services.

Economic value of well-known trademarks

The classic target in cases of trademark parody is usually a well-known trademark. A trademark itself is more than an indication of origin. Especially well-known trademarks have significant economic value, usually developed through innovation, long-term investment and intensive advertising.

Consequently, trademarks are covered by the guaranteed protection of property under Austrian constitutional law. Protection is also provided under Austrian trademark law (Markenschutzgesetz) and unfair competition law (Gesetz gegen den unlauteren Wettbewerb; UWG), especially against unfair imitations.

Broader protection of trademarks having a reputation under Austrian trademark law

A trademark with a reputation enjoys a broad protection, which also covers goods and services for which the trademark is not registered. According to the wording of the law, for this protection to apply, it is only necessary that a similar sign be used which takes unfair advantage of or is detrimental to the distinctive character or reputation of the well-known mark. This is really competition law dressed up as trademark law6.

Unfair exploitation in this sense is especially given where a third party attempts to ride on the coattails of a wellknown mark in order to benefit from its power of attraction without paying any financial compensation and without being required to make efforts of its own7. This applies not only to exploitation of reputation but also of a trademark's distinctiveness8.

Protection against imitation under Austrian unfair competition law

Unfair competition law also provides protection against imitation of work (or signature) if certain unfair elements are present, such as the wilful appropriation of special design features of device marks, logos, typical writings or arrangements in terms of colour and shape9. Unfairness is even more apparent when the intent is to transfer quality (through exploitation of reputation) or exploit distinctiveness.

Protection of freedom of art and freedom of speech under Austrian constitutional law

With regard to basic rights, the critical element of a trademark parody must be assessed on freedom of speech grounds. The humoristic element of a trademark parody (e.g. of a word-device mark) must be evaluated in the light of freedom of art.

According to the case law of the Austrian Constitutional Court, freedom of art may be legally restricted if it is necessary for and proportionate to the protection of another object of legal protection. This principle of proportionality also applies to interference in freedom of speech, whereby commercial advertising may be restricted more than the expression of political ideas10.

Core meaning of a statement

In order to evaluate parodies in conflict with other rights, it is necessary to unveil the core meaning of the statement11. As long as trademark parodies do not considerably deal with the trademark concerned and are merely used to launch a product which otherwise would not (or only under major efforts) be marketable, no justification is given12. If the substantial meaning of the parody results in an unacceptable, sweeping degradation of the original, boundaries have to be set to a justification based on freedom of speech.

When the main purpose of the parody is to evoke comparisons between the goods or services of the imitator and the goods and services of the branded products or services, justification based on constitutional rights should be negated. Indeed, the prevailing case law in Austria forbids the sweeping assertion that one's own product is equivalent to another well-known and commonly highly regarded product13. Such a substantial meaning can be legitimated neither by means of freedom of art nor freedom of speech.

A careful weighing of interest must be made in cases where trademarks and freedom of art and freedom of speech conflict. However, when economic actions have the main intention of boosting one's own economic interests – or, in the author's opinion, when there is a wilful transfer of conceptions of quality and excellence to one's own products – a trademark parody cannot be justified, however humorous it may be.

This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.

Footnotes

1 Wermke et al [Ed], Duden22 I, 726.

2 Cf: German Federal Court of Justice February 3, 2006; I ZR 159/02 – Lila Postkarte = GRUR 2006, 192.

3 Cf: Cour de cassation in France (April 8, 2008 ; n° 432 –E$$O).

4 Cf: Regional Court of Hamburg October 27, 2000, 315 O 423/99 – Deutsche Pest = GRUR 2000, 514.

5 Austrian Supreme Court September 22, 2009; 17 Ob 15/09v – STYRIAGRA.

6 Born in GRUR 2006, 193 with further references.

7 ECJ June 18, 2009, C-487/07 – L'Oréal/Bellure – para 49.

8 Austrian Supreme Court September 22, 2009; 17 Ob 15/09v – STYRIAGRA.

9 Austrian Supreme Court October 19, 2004, 4 Ob 215/04b – Deluca.

10 Walter/Mayer/Kucsko-Stadlmayer, Grundriss des österreichischen Bundesverfassungsrechts para 1461.

11 Handig in Wiebe/Kodek, UWG § 1 para 481.

12 Austrian Supreme Court September 22, 2009; 17 Ob 15/09v – STYRIAGRA; Hacker in Ströbele/Hacker/Kirschnek, dMarkengesetz § 14 para 117.

13 Herzig in Wiebe/Kodek, UWG § 2 a para 29.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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