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Whether or not you find them funny, most people would have at some stage encountered satirical adaptations of well-known brands. Parodies or satirical adaptations of famous brands are common. They appear in sketch comedy or news satire programs, or on t-shirts or other garments. For owners of well-known brands, parodies can be concerning, particularly if the adaptation portrays the brand in a negative manner. However, not all adaptations will contravene the law. In many cases, brand owners have limited options to enforce their rights against satirical adaptations. This article will explain the three actions that brand owners can bring against a parody on their trade mark.

Trade Mark Infringement

A common complaint by owners of parodied brands is that the parody is an infringement of their trade mark rights. Assessing whether a parody qualifies as an infringement requires consideration of several different factors.

Trade mark infringement occurs when somebody uses a sign that is identical to or similar to the registered trade mark. It only occurs where the trade mark is in relation to the same kinds of products. While many parodies are certainly visually or phonetically similar (or even phonetically identical), these are not the only factors to consider. A key element of trade mark law is that the infringer must be using the sign as a trade mark.

Use as a Trade Mark

A sign is used as a trade mark if it is used, in trade, as a ‘badge of origin’. A badge of origin essentially indicates that it comes from the original company.

For example, consider McDonald’s iconic “golden arches” trade mark. If you started using that trade mark in your products to make items that people believed were from McDonalds themselves, that would be infringement.

Consumers see these satirical adaptations of well-known brands regularly. Therefore, while they recognise the parody, it is unlikely they would believe that the parody originates from the original brand owners. The purpose of a successful parody is often humour, so the adaptation does not normally function as a ‘badge of origin’. In these cases, there is a strong argument that using the parody does not constitute use as a trade mark, even if it is very similar to the original brand.

United States Courts have recognised that parody or satire of famous brands does not constitute trade mark infringement in certain cases. This is where it is obvious to consumers that the parodied brand was not the manufacturer of the goods.

Although there are no authorities at the moment, it is likely that Australian courts would hold a similar opinion. Australian courts have accepted that decorative use of signs on clothing does not necessarily indicate the origin of the goods. However, owners of famous brands have still commenced legal action against parodies. Therefore, you must be extremely cautious to not use any trade marks as a badge of origin when making a parody.

Deceptive Similarity

Even if a party can argue the parody trade mark is in use as a trade mark, there remains a significant question about whether the parody mark is deceptively similar to the original. A trade mark is deceptively similar if it resembles a trade mark so much that it will cause confusion among customers.

Australian courts recognise that surrounding circumstances, including the characteristics of the target audience or intended purchasers of the goods, are relevant when deciding whether deception or confusion may occur. Courts have also recognised that consumers of well-known or luxury clothing goods tend to subject the purchased goods to greater scrutiny than in other areas. This is a strong indication that parodies or adaptations of well-known brands are not deceptively similar to the original brands. 

Passing Off

Owners of well-known brands will sometimes complain that parodies are ‘passing off’ their brand. This is a tort claim available in Australia. Passing off applies where the parody damages the original brand’s reputation or goodwill by causing potential customers to, in some way, associate that parody product or business with the original brand.

To be successful in a claim of passing off, the original brand must establish that:

  • they have a reputation in the marketplace;
  • the offending party has misrepresented that their goods are those of the original brand; and
  • the misrepresentation has caused or is likely to cause damage to the original brand.

The misrepresentation requirement in a passing off claim is similar to that in a deceptively similar claim. However, in a passing off claim, the deciding factor is not whether it will cause confusion, but rather whether they will be misled or deceived about the origin of the goods/services. 

It would be an ineffective parody where consumers could not link the parody to the original brand in some way. However, it would be similarly ineffective if consumers thought the parody was actually associated with the original brand. It would no longer be a successful parody in that case. In cases of parody, it is unlikely that consumers will be misled about the origin of the goods/services being provided. 

Australian Consumer Law

Another action brands may bring against parodies is that of misleading or deceptive conduct. The Australian Consumer Law (ACL) prohibits people from engaging in misleading or deceptive conduct.

The ACL prohibits a parody from making false or misleading representations about goods or services, including representations that:

  • their goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits that they do not; or
  • they have a sponsorship, approval or affiliation that they do not.

As with passing off, the parody’s success relies on consumers recognising the brand as a parody. Thus, it would be in cases where the parody was unsuccessful where deception could occur.

Key Takeaways

Brands have a difficult time when attempting to enforce trade mark law against parodies. In many cases, owners of well-known brands will have limited options for enforcement. This is even where the infringement relates to registered rights. The key to a successful claim is largely focused on consumer deception. Therefore, so if you are creating a parody or attempting to enforce your original brand, it is critical to consider whether the parody will actually deceive potential customers or not.

In any event, consulting with a legal professional is a better avenue to ensure your claim is successful. If you are the owner of a brand and are worried about infringement, or if you have been accused of infringement, Legalvision’s intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions

If I see somebody making a parody of my trade mark, what actions can I bring against them?

You may be able to bring an action for passing off, trade mark infringement or misleading and deceptive conduct. However, the success of each action depends on the individual circumstances.

What does using a trade mark as a ‘badge of origin’ mean?

Using a trade mark as a badge of origin essentially means that you are claiming that your products come from the company that is associated with the trade mark.

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