Aonia Masood

My Legal Blog

Sattar Buksh – Parody or the Dilution of Trademark? — November 14, 2016

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.)

YSL Logoed Heels – One of its own kind! — October 15, 2016

YSL Logoed Heels – One of its own kind!

Anthony Vaccarello, in last week of September, debuted his first collection at Paris Fashion Week Spring 2017 while relaunching “Yves” into Saint Laurent which was previously omitted by the Former Creative Director Hedi Slimane. The interlocked YSL logo (trademark) has been incorporated in an exceptional way into stiletto heels and his other creations. Ergo, providing the protection against counterfeiting of brand’s latest creation. Besides, the uniqueness of the YSL logoed heels may also not  be knocked-off in a confusingly similar way ‘cos that is one of its own kind!

Can Fashion Designers Lose Right to Use Their Own Name? — October 14, 2016

Can Fashion Designers Lose Right to Use Their Own Name?

Trademarks and the associated reputation, synonymously known as brand names, are considered an important asset of any business entity; consumer’s decisions to purchase is normally influenced by the brand reputation. In fashion world, aspiring designer while starting their career with established brands often attempt to launch their designs with their personal name labels (trademark). However, using personal name while launching their designs under someone else’s corporate umbrella can also be disadvantageous with regards to their future prospects as their name may become knotted with the goodwill associated with the brand itself rather than with the designer. Susan Scafidi, fashion law professor at Fordham University while being interviewed by Fashionista, said “When you put your name on a label, that is a corporation and no longer belongs to you.”

Earlier this year, the famous designer, Kate Spade, who previously owned the brand Kate Spade New York, after taking fashion break of nearly a decade made her comeback in fashion industry and swapped her surname to Kate Valentine. Kate Valentine, in 1993, along with her husband Andy Spade launched a fashion a company Kate Spade LLC. However, in 2007, Liz Claiborne acquired the company – now a public company called Kate Spade & Co – for $125 million while intellectual property rights including the well-established trademark ‘Kate Spade’ was made part of the deal and consequently Kate Valentine lost the rights to use her name for commercial purposes and thus to make her comeback she was bound to re-brand herself and she did.

In another instance, a renowned British fashion designer, Karen Millen, was barred from using her own name for commercial purposes this year as she had previously sold her majority shares in Karen Millen Holdings to Baugar Group for 95 million pounds. Karen Millen is considered an integral intellectual asset of the company which is driving in huge profits.

Fashion designers (aspiring or established) should stay vigilant with regards to future prospects while attempting to use or license or sell away their trademark or personal names regardless how the profitable offer seems to be. One of such example is when Tom Ford, while working as a Creative Director, never allowed to use his personal name for any designs being launched by Gucci or Yves Saint Laurent which later enabled him to launch his own brand using his own name. Ergo, if the caution is not taken the designer may suffer a great loss as when the right time would come to reap benefits he will have to begin from scratch while the castle of his name will be standing in someone else’s corporate land!

Section 26 of The Patent of Ordinance 2000- Resident in Pakistan — September 17, 2016

Section 26 of The Patent of Ordinance 2000- Resident in Pakistan

The law of Pakistan, under section 26 of the Patent Ordinance 2000, necessitates that any Pakistani resident before filing or causing to be filing the foreign patent application should first obtain foreign filling license i.e., written authority from the controller of patents. Otherwise, he should wait at least six weeks for filing foreign application after the date of first filing of patent application in Pakistan. The provision in ordinance has been incorporated under the chapter related to the secrecy of the certain inventions for the purpose of security of the state and therefore the same has to be read in the light of previous section.  The contrivance allows the government to assess or check if the information related to invention being exported out of Pakistan could threaten the national security; the provision is similar to the patent legislation adopted by foreign countries i.e.,   Section 34 of Singapore Patent Acts 1994, 35 USC 184 in the US Patent Act, and Section 23 of the UK Patent Act.

 The term “Resident” used in section 26 provides the basis for the interpretation of the said provision; the place of the person filing the application is kept in focus here while the place of creation of the invention remains completely immaterial. However, the said term  has not been defined anywhere in the ordinance or related rules which might render the provision ambiguous. In American case Hanson v. P.A Peterson Home Ass’n, word “resident” was defined as follows:

“Any person, who occupies a dwelling within the state, has a present intent to remain within the State for a period of time, and manifests the genuineness of that intent by establishing an ongoing physical presence within the State together with indicia that his presence within the State is something other merely transitory in nature. The word ‘resident ‘when used as a noun, mean a dweller, habitant or occupant; one who resides or dwells in a place for a period of more or less duration; it signifies one having a residence, or one who resides or abides.”

The word resident has also been defined in a Pakistani case law 2001 CLC 1305 as dweller, habitant or occupant; one who resides or dwells in a place for a period of more or less duration; it signifies one having residence, or one who resides or abides.

However, the above-stated definitions do not provide for what period of time, either weeks or years, a person is required to dwell in a place to become a resident of that place. Therefore, the provisions of the Income Tax Ordinance may be referred here which states that a person shall be a resident person for a tax year i.e., 1 July of the previous calendar year and concluding on 30 June, if the person is a resident individual, resident company or resident association of persons for the year.

According to the section 82 of the Income Tax Ordinance 2001, an individual is termed as a “Resident of Pakistan” if that individual is present in Pakistan for a period of, or periods in aggregate to, one hundred and eighty-three (183) days or more in the tax year or is an employee or official of the Federal Government or a Provincial Government posted abroad in the tax year.

Singaporean patent law, under section 34 (4) (c), defines the term resident as a person who, at the material time, is residing in Singapore by virtue of a valid pass lawfully issued to him under the Immigration Act to enter and remain in Singapore for any purpose. While the section 23 of the United Kingdom Patent Act states that a person normally resident abroad but temporarily resident in the United Kingdom or a person who is not a United Kingdom citizen but has a residential address here is considered to be the resident of United Kingdom; and if a person normally resident in the United Kingdom lives abroad for a period of several months, he will be regarded as having ceased to be a United Kingdom resident during this period.

The intent of the legislature to incorporate the word “resident” in the provision was to widen its ambit excluding the possible restrictions that can be imposed on the applicability of the provision due to difference of nationalities of the persons making patent applications since the term “resident” has wider connotation as compared to that of the term “citizen”.