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Intellectual Property Law

: IPKat

Free speech versus trade mark rights at the Swiss Indoors

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

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Trade mark parody cases always draw a lot of interest - maybe more than justified by their commercial (in)significance, but the boundaries of free speech imposed by trade mark law and unfair competition law are a fascinating topic.

An interesting case has just been published in Switzerland: A non-profit organisation put up an anti-tobacco site under the domain davideathswissindoors.ch, criticizing the sponsorship of a sports tournament by a tobacco brand ("using tennis to sell death"). The website features a parody of the official Davidoff Swiss Indoors logo that requires a close look to distinguish it from the original (see right).

Davidoff was not amused and obtained an ex parte injunction against the further distribution of the website. Game one for Davidoff, so to speak.

It was a short lived triumph, however, because after the hearing, the injunction was lifted. Davidoff had based its complaint on both trade mark law and unfair competition law (a copy of the complaint is here [in German]), but did not really stress the trade mark claim. Since under Swiss law the trade mark owner can only enjoin the commercial use of the mark, and the website did not offer anything for sale, this is understandable. Davidoff's main argument was that the use of the modified logo was "needlessly disparaging" ("unnötig herabsetzend") in the sense of Federal Act against Unfair Competition. The Act applied whenever a behaviour had an influence on the market, it did not require a competitive relationship between petitioner and respondent.

The Civil Court of Basle agreed that the Act against Unfair Competition was applicable, but saw no violation (likelihood of confusion was not specifically addressed; I assume the court did not see any). It was permissible to provoke in an attempt to change the public perception of a criticized behaviour. Since the brand owner used emotionally charged images in his communication, so could the critics. Exaggeration and distortion was not against the law as long as it did not suggest a non-existing relationship; here, the relationship between tobacco and death was given. The court distinguished the case from an older case decided by the Austrian High Court (13 Sept 1988, 4Ob48/88). The Austrian High Court had found it unfair that tobacco critics had singled out a single brand ("Only a camel would go a mile for a cigarette") to target their criticism of tobacco in general, which applied to any cigarette brand. Here, however, the respondent specifically criticized the sponsoring of a sports tournament by a tobacco brand, and only the petitioner is sponsoring the tennis tournament.

First set 6:1 to the respondent. Davidoff could have continued the match but chose, probably wisely so, not to file suit in ordinary proceedings on the merit. One could say it retired

(Full text of the reasons only available behind a pay wall; the abstract is here [German/French]).

Full post as published by IPKat on May 28, 2010 (boomark / email).