Counterfeits: brand parodies under scrutiny by professionals

By

Matthieu Guinebault

Published
Oct 31, 2014

While the European Union is preparing to reform its trade mark protection measures, several professional bodies, including Euratex, have shared their concerns in an open letter addressed to the Commission.

The bodies thus point out a few incoherencies in the work documents. Notably in terms of comparative advertising, providing in one provision that the proprietor should be entitled to prohibit the use of a sign in comparative advertising in clearly-defined circumstances, while in another provision restricting this prohibition. The letter calls for making legislation on malicious parodies of brands. 

"We don't understand why a comment or parody using the trade mark for the commercial benefit of the commentator should be acceptable," states the letter. "We believe that any use of a mark by a third party in the course of trade in a way which may be detrimental to the reputation of that mark can and should constitute infringement."

In many national laws, successive jurisprudences have established that the misappropriation of a brand is only legal in a specific scenario. For Community trade marks, it is law EC 207/2009 article 9-1-C that comes into play. It states that the use of any sign identical with, or similar to, the Community trade mark without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark. And it is thus this point that the bodies would like to see reinforced, to hold those responsible accountable.

It remains to be seen if the Commission will follow the recommendations of the signatory professional bodies of this open letter. In addition to the Euratex manufacturers union, the letter is also signed by the European Brand Association, the Federation of the European Sporting Goods Industry (FESI), the International trademark Association, and Marques, the Association of European Trade Mark Owners.

Authors in this letter who are also asking Europe for a clear solution in the fight against counterfeit goods in transit through the EU. During the temporary suspension of the right to control goods in single transit (Nokia/Philips judgement), the European seizure of counterfeits dramatically dropped.

The authors also state that "for any initiative to reflect and respond to users’ needs, any common project must, by default, be of interest not only to the Union and the Member States but also to the users. If users see no value in going forward, projects should not be started."