06 June 2003

Sylvie De Oliveira

Is it legally possible to parody a trade mark? Is the trade mark owner entitled to challenge such a parody or caricature and, if so, on what legal grounds? These are the issues addressed by the recent "Esso v/ Greenpeace" case.

In summer 2002, Greenpeace copied Esso's trade marks and logos but replaced the letter "S" of the word "Esso" by the "$" dollar sign. They then posted the modified trade marks on their web site, denouncing the damages to the environment and the risks to human health caused by Esso’s industrial activities. Esso immediately brought trade mark infringement proceedings against Greenpeace on the basis of Article L. 716-6 of the French Intellectual Property Code ("IPC") in order to prevent Greenpeace from posting the modified logos on its web site. Esso won the case in the first instance as the Court decided that there was a likelihood of confusion resulting from the imitation of the relevant trade mark (Injunction order of the Tribunal de Grande Instance of Paris , 8 July 2002).

Greenpeace appealed and the Paris Court of Appeal overturned the injunction order in a decision dated 26 February 2003. The Court of Appeal's decision departs from the existing French case law and makes room for parodies in relation to trade marks.

1. To parody a trade mark is illegal under French law

1.1 French legislation

As far as copyright is concerned, Article L. 122-5 IPC provides that "[O]nce a work has been disclosed, the author may not prohibit […] parody, pastiche and caricature, observing the rules of the genre". There is no such provision in trade mark law, nor have the courts ever used this principle in relation to trade marks. Thus, the Tribunal de Grande Instance of Paris refused to apply Article L. 122-5 IPC to the advantage of Greenpeace in the Esso case.

Under the IPC, it is not possible to parody a trade mark. It follows that the rights of a trade mark owner prevail over the freedom of speech. Therefore, in order to prevent a trade mark from being parodied, French courts rely on Article L.713-3 IPC which provides: "the following shall be prohibited, unless authorized by the owner, if there is a likelihood of confusion in the mind of the public: (a) The reproduction, use or affixing of a mark or use of a reproduced mark for goods or services that are similar to those designated in the registration; (b) The imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration." Consequently it is for the courts to decide whether the parody of the trade mark is likely to cause confusion in the public mind.

1.2. French case law

Since the "jeboycottedanone" case (decision of the Tribunal de Grande Instance of Paris of 4 July 2001), the courts regularly rule that the defence of parody in copyright law does not apply to trade marks. According to the courts, this will be the case even if the parties do not compete against each other on the market place. In the Esso case, the Tribunal de Grande Instance of Paris followed the existing case law. The Tribunal was of the opinion that the slight modifications of the Esso logos by Greenpeace "necessarily recalled the goods and services offered by this well-known trade mark" and that "the wording used was likely to damage the reputation" of the imitated trade mark. The Tribunal held that there was a risk of confusion and prohibited the posting of the imitations on the web site.

This decision is supported by some European case law on this issue. This, however, did not prevent the Paris Court of Appeal from overturning the decision of the Tribunal and from deciding that the freedom of speech should prevail over trade mark rights.

2. …but French Case law rules that parodying a trade mark is not necessarily unlawful

2.1 The right to parody a trade mark prevails over trade marks rights

The Paris Court of Appeal disagreed with the reasoning of the Tribunal de Grande Instance de Paris and did not follow the existing case law. In order to do so, it did not transpose into trade mark law the defence of parody that exists in copyright law, but rather relied on the importance granted by the French Constitution to the freedom of speech. Thus, the Court of Appeal held that "although this freedom is not total, it shall not necessarily be limited by third parties' rights ".

On the basis of the freedom of speech, the Paris Court of Appeal established that Article L. 713-3 IPC could not "be usefully and seriously relied upon". The Court of Appeal pointed out that there was no risk of confusion since "through the modified Esso's trade marks as well as the accompanying wording, Greenpeace clearly show[ed] its intention to denounce Esso's activities, which it criticised for the damage they cause to the environment, without confusing the public as to the identity of the author of the publication".

The Court of Appeal ruled that it was "obvious" that the imitation of the trade mark did not aim at "promoting the marketing of goods or services to the benefit of Greenpeace but constituted a polemical use of the trade mark which had nothing to do with business." Thus the Court of Appeal established the right to parody a trade mark on the basis of the freedom of speech.

2.2 The limits of the right to parody of a trade mark: the abuse of right

The Court of Appeal stated in its decision that the freedom of speech would not prevail in the event of an abuse of right. It is important to stress that if the parody of trade mark "exceeds what is necessary to achieve the purpose that is sought" and damages the economic interest of the company of which the trade mark is parodied, then the parody becomes unlawful. The idea is to prevent parodies, caricatures or others polemics that reveal a real intention to cause damage and go beyond the main purpose of the parody.