5 February 2015

Parody trademarking

I actually wouldn't mind getting one of these tees.

Major brands have always been subjected to parodies. In US, the Courts recognize parody as a defence against a trademark infringement action, although this area of law is not covered in Singapore.

Here are some amusing parodies and their not too amusing consequences:

North Face vs South Butt (2007 - 2011)

In a nutshell: The South Butt was started in 2007 by Jimmy Winkelman as a parody brand that sells clothing. It was issued a cease and desist letter by North Face and in 2010, both parties reached a settlement in which the terms are undisclosed. However, instead of abandoning the brand, Winkelman proceeded to launch The Butt Face. This time, a judge ordered the Winkelmanns to abandon their application for "The Butt Face" trademark, shut down their web store and Facebook page, surrender all merchandise and pay $65,000.

Read more here

Saks Fifth Avenue vs Snaks Fifth Avenchews (2014)

Oh look! Puppy!

In a nutshell: Snaks Fifth Avenchew was served with a cease and desist letter from Saks Fifth Avenue for the usage of her company name. For most small businesses, it would have been easier (and spared them the litigation expenses) if they were to just change their name. But what if you have spent a lot of time, effort and money on your branding? In this case, Snaks business owner, Carrie Sarabella, is not ready to just give up on her brand and has hired a copyright lawyer. It has been argued that
the name was acceptable under the so-called fair-use law, which “recognizes that parody marks cause no harm to the established mark
Such determination proved to be worthwhile for Carrie as they've consequently received a letter from Saks, saying that they would no longer pursue the matter. As an added bonus for Carrie, she's received more publicity and her sales figures has never been higher.

Read more here

Here are more articles on parody trademarking that has gone wrong (or right, it depends)
Polo/Ralph Lauren overturn polo player on a bicycle trademark decision
Dear Google: Parody Is Not Trademark Infringement

Should you have any enquiries or other amusing trademark parodies, feel free to drop us an email or tag us in your replies!

No comments:

Post a Comment