Sattar Buksh - Parody or the Dilution of Trademark?

Sattar Buksh - Parody or the Dilution of Trademark?

“Starbucks and ‘Sattar Buksh’ is no mystery — mainly because it is a deliberate marketing tactic,” a famous newspaper, The Express Tribune – Pakistan, headlined. Well, no doubt, it was massive and pretty bold step towards making their brand shine, however, could this tactic possibly land the owner of brand into legal suit for infringing upon someone else’s right?

“Sattar Buksh” was an impossibly well-planned parody of the renowned trademark “STARBUCKS” which gave it the overnight fame spreading across the world through social media. Trade mark rights are lifeline of businesses and unauthorized use of owner’s trademark by third parties results in un-quantifiable loss and damage to its goodwill and business, which is irreparable in nature. [1] The trademark law provide protection to famous brands against dilution even if there is a clear indication that the goods of copied brands are emanating from different sources and regardless of the presence or absence of competition between owner of the well-known trademark or other parties.[2] Trademark dilution occurs when, because two signifiers are similar, they lessen each other’s differential distinctiveness[3] or lessen their uniqueness. The Canadian court in famous case, Clairol International Corp. v. Thomas Supply & Equipment Co. Ltd.,  has decided that the goodwill can be depreciated through dilution even if there is no actual risk that consumer might be confused between the two marks.[4]

In Pakistan, well-known marks are entitled to protection against the mark which is identical or deceptively similar and where the use of such mark is likely to cause dilution of the distinctive quality of the well-known trademark. However, it is settled principal that highest degree of fame is required under section 86 (3) of Trade Marks Ordinance 2001 to claim the protection under dilution. For instance, although there is no global list of well-known trademark, but Coca-Cola; Google; Apple; McDonalds; Microsoft; IBM; Citibank; Boeing; Toyota are said to qualify such a list.[5] Traditionally, the factors which are measured to determine whether a mark possesses a certain degree of recognition include the period of use, the extent, geographic reach of advertising and publicity of the mark, the amount volume and geographic extent of sales of goods or services offered under the mark.

Speaking of “Sattar buksh”, this is not the first instance where the Starbucks has been parodied as a brand. In 2014, the comedian Nathan Fielder launched a coffee shop under parodied brand name \\'Dumb starbucks' in Los Angeles after which the public and media went frenzy over it and made the same big hit. However, the shop was closed down later… Oh! No! Not for copying the brand but for operating without license. As far as the copying was concerned the Nathan Fielder apparently had the defense of parody art given under US law which of course ultimately had to be decided in the court of law. Parody usage of trademarks or artistic expression of marks is quite prevalent all over the world which are normally adopted to make fun of or comment on or criticize famous brands. Parody of the marks gives the parodist an advantage of capitalizing at the expense of parodied brand and attracting a huge lot of consumers.

Traditionally, the concept of parody or satire is applied in Copyright Law; however, under Pakistani copyright law there is no specific provision providing defense for parody whereas there is an exception concerning fair dealing under section 57 which applies to the circumstances of criticism, review, research or private study.  In contrast, under US law the defense against copyright or trademark infringement can be claimed as parody other than the defense of fair use. However, in certain cases US courts have rejected the defense of parody and held use of trademarks disguised as parody or satire to be infringement as the US Federal court did in People for Ethical Treatment of Animals v Doughney; the defendant had argued that his website, entitled “People Eating Tasty Animals”, was a parody of the plaintiff's name “People for the Ethical Treatment of Animals”.

Besides, in EU Countries the parody of trademarks is legal now; regulation (EU) No. 2015/2424 of the European Parliament and of the Council provides in its Recital 21 that:

 "Use of a trade mark by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters.

Coming back to Sattar buksh, soon after the launch of parodied brand in Pakistan the Starbucks came to the knowledge of their trademark and copyright violation and served a cease and desist letter to the proprietors which eventually made them change the trademark / artistic expression while releasing a disclaimer on their Facebook page, “We have nothing to do with any foreign franchise nor do we want to categories ourselves as mere coffee experts. We’re ‘Jutts of all trades’ and we cater to everyone!”.

The parodist should be expecting a potential dilution claim while making the sale of their products under the parodied trademark as trademark dilution can take place even if the consumers are able to differentiate between the different sources and also because there is no specific jurisprudence to protect parody brands in Pakistan.

[1] 2013 CLD 201 = PLJ 2013 Lah. 65 = PLD 2013 Lah. 10

[2] Section 2 (xiii) of the Trade Marks Ordinance, 2001

[3] Trademark Law and Theory: A Handbook of Contemporary Research (edited by) Graeme B. Dinwoodie, Mak D. Janis

[4] Clairol International Corp. v. Thomas Supply & Equipment Co. Ltd., (1968) 55 C.P.R. 176, [1968] 2 Ex. C.R. 552

[5] 2016 CLD 1864 (Dalda Foods (PVT) Ltd. Vs. M/s Shield Corporation Ltd.)

Note: The original post is written by Aonia Masood at http://consiliers.com/sattar-buksh-parody-or-the-dilution-of-trademark/.