19 September 2013Trademarks

Marques 2013: the clash between trademarks and free speech

"Sometimes you need to chill" was a key message to brand owners during a session on trademarks and free speech at the Marques annual conference in Monte Carlo.

The first part of the session on Thursday looked at governments’ restriction of trademark rights and the subsequent impact on brands’ ability to communicate, before the focus turned to trademark infringement and free speech.

As plain packaged cigarettes were passed around the room, Marion Heathcote, partner at law firm Davies Collison Cave, discussed plain packaging laws from Australia, where cigarettes have been sold in dark brown packets with graphic images since last year.

"This didn't just happen overnight," she said, noting that plain packaging was first discussed in Canada in 1986. In Australia, there was no political support for plain packaging until 2007, she said, when a new government began to shift the momentum.

As a result of the changes last year, Heathcote said, companies have been denied the right to display their legitimate trademarks while simultaneously being forced to publish "government propaganda".

Protecting public health – the major argument justifying the law – is laudable, she conceded, "but it is not clear that plain packaging actually works" and reduces smoking.

She added: "What other products is the government able to control in the name of public health? I urge you to think about these issues. We are on the brink of a very slippery slope of controlling a brand owner's right to promote a legitimate product."

To provide a European angle, Laetitia Lagarde, partner at Studio Legale Jacobacci & Associati, discussed the 2012 Tobacco Products Directive, which proposes mandatory health warnings covering 75 percent of the front and back (from the top edge) of cigarette packets. Plain packaging would not be compulsory, but the directive provides for more stringent rules in EU member states.

Following the proposal, Ireland announced in May 2013 that it plans to introduce plain packaging laws.

Lagarde said, however, that the directive could breach the TRIPS agreement, as there would be a conflict between articles governing measures necessary to protect public health and those stating that trademarks should not be unjustifiably restricted.

Kicking off the second part of the session, Lagarde provided some examples of the battles between trademarks and free speech. In one case in France, oil company Esso sued Greenpeace for parodying its trademark. Greenpeace had replaced the 's' (both) with dollar signs in an attempt to denounce Esso's environmental policies.

In the first instance, a Paris court found there was infringement. But this ruling was overturned on appeal and confirmed by the Supreme Court in 2008. Both higher courts said the use was within the acceptable limits of freedom of expression, as there was no attempt to promote the Greenpeace brand – the parody was purely controversial.

In an older case in Germany, sports brand Adidas took action over the 'adihash' trademark, a reference to marijuana. The court found infringement – consumers would not recognise that ‘adihash’ was a satirical statement – but other cases in Germany have placed freedom of speech above trademark rights.

"The balancing of freedom of expression and trademark rights is in continuous evolution," Lagarde said.

Peter Dernbach, partner at law firm Winkler Partners in Taiwan who was chairing the session, concluded that "sometimes you just need to chill", otherwise the negative publicity of targeting parodies could be damaging to a brand owner.

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