The German Federal Court bans parody of well-known trademarks from trademark protection
The German Federal Court held on 2 April 2015 that the owner of a well-known mark may demand the cancellation of a trademark, that is inspired in its overall appearance by the form of a parody of the well-known trademark.
The claimant is a leading manufacturer of sportswear. He is among others the owner of the following trademark
The defendant filed the below pictured trademark
for e.g. clothing.
The German federal court held that the registration of such trademark is violating the trademark rights of the owner of the well-known trademark. The court found that the trademarks were similar in terms of trademark law. However, it denied a likelihood of confusion since the differences of the trademarks were conspicuous and the public would not confuse these trademarks. Nevertheless, the court came to the conclusion that the trademark had to be cancelled. It argued that the defendant’s trademark takes unfair advantage of the well-known trademark without due cause. The defendant’s trademark benefits from the similarity of the two trademarks since it receives a degree of attention only because of the similarity to the well-known trademark. Therefore, the court held that the defendant had to agree to the cancellation of the trademark.
The defendant invoked among others the constitutional right of freedom of artistic expression. The court, however, found that such constitutional right does not grant the defendant the right to register a similar trademark for identical or similar goods.
This case shows on the one hand the strength of well-known trademarks and it shows on the other hand that using parody as marketing instrument can easily be an infringement of rights.