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/.
