Trademark Infringement query

[bbloke]

Hi,

I've had one of my products removed on ebay as a trademark infringement. It's been listed on ebay for several years, so I was a little surprised. However, after some investigation I suspect they may have a point. I'd be interested to hear your take on it!

The item is a badge which parodies the WWF logo as shown here:




As far as I can see, according to UK law WWF may have a case because I have based my design on elements of their own logo, for which they have a trademark registered for the button badge class (Class 29).

I've only sold a handful - for a profit of probably a pound! - so it isn't a problem for me to discontinue the product. But i'm curious about the case for parody in our legal framework, especially with regard to freedom of expression. I suppose one could argue that my parody 'dilutes' their trademark. But I personally think it's a bit harsh!

Additionally, and this is a technicality, the infringement notice came from a German based law firm. However, I suspect this parody would probably be fine under German law. How does that work, legally?

Best wishes!

[AndyJ]

Hi bbloke,
Yes, you are undoubtedly correct that the problem is the similarity between your button badge and the WWF registered mark, shown here for comparison



Unfortunately for you there is no parody defence in trade mark law, although there would be a strong legal argument for saying that your button badge would not confuse the average consumer into thinking that it had originated from the WWF. But as you have said, dilution of a trade mark is a serious concern for brands, because the integrity of their trade marks forms part of the goodwill of a brand. Of course not all brand owners are so fastidious about this, and some actively encourage the wider publicity which can come from parody, often parodying themselves (remember the Apple 'Mac vs PC' adverts?) in order to appear 'cool'.

And many third party companies are comparatively successful in exploiting parodies of brands, as can be seen from this site: Redbubble. So it seems you are the unlucky victim of ebay's Vero intellectual property protection scheme which makes it easy for the big players to get stuff they don't approve of removed, without having to seriously justify their claim.

On the question of the German law firm, WWF are based in Switzerland and their trade mark registration is an EU wide Community Trade Mark, so that is probably why they retain German lawyers. I am not aware of any parody exception under German trade mark law, and would be surprised if there is one, as EU trade mark law is fairly unified through a number of EU directives, which themselves have to conform to international treaties on the subject.

Perhaps with some inventive PR you can turn this setback into a plus by creating a trend, say via twitter or Facebook, such that your badges become sought after, and you won't need to use ebay.

[bbloke]

Hi AndyJ,

Thanks for the - as ever - detailed response.

So it seems you are the unlucky victim of ebay's Vero intellectual property protection scheme which makes it easy for the big players to get stuff they don't approve of removed, without having to seriously justify their claim.

Indeed!

I've around a 1000 designs and I think this is the only logo parody, so I'll just take it on the chin. Ironically, eBay is full of competitors selling trademark and copyright infringing badges - something which I work had to avoid - with impunity. Oh well...


Re German law, I've just checked and I had misread the info I'd found. Apparently, parodying a work is subject to the consent of the author, which is fair enough.

Cheers!