In the previous article, we discussed the legality of parody in the realm of copyright law. In this article, we will discuss parody in the realm of trademark law. Parody is not only done on creations, there are also many sellers who use parody of well-known marks so as to give a humorous impression of the mark, and can also be one of the marketing methods to increase profits. As an example the well-known mark “ANGRY BIRDS” which was parodied as “ANGKRY NGAN” or the well-known mark “ADIDAS” which was parodied as “AINDA” and “ADIMAS”.
Law Number 20 of 2016 concerning Marks and Geographical Indications (Mark Law) does not specifically regulate the use of parody marks. However, Article 21 of the Trademark Law stipulates that a mark may not have similarities in essential with well-known marks and/or prior registered marks.
As for what is meant by “similarity in essential” in the elucidation of the article is the similarity caused by the presence of a dominant element between one Mark and another, giving rise to the impression of similarity, both in terms of form, placement method, writing method or a combination of elements, as well as the similarity of speech sounds contained in the Mark.
Furthermore, Prof. Rahmi Jened in her book entitled Trademark Law, it is stated that the parody of a trademark can be considered as a dilution act in the form of tarnishment. This tarnishment occurs when a mark is used by someone without permission in the context of a travesty that completely contradicts the reputation that has been built by the underlying mark being parodied. Quoted from the same book, Thomas Mc. Carty also provides factors that can be used as a reference to show mark dilution, namely:
The mark used is a well-known mark that has a reputation.
Marks have similarities in principle, especially for goods that are not of the same type.
There are uses that are for the reduction, fading, and blurring of rights without rights.
Although the Trademark Law does not specifically regulate parody trademarks. Committing a parody of someone else’s mark can be categorized as a form of trademark infringement, namely the violation of the exclusive rights of the mark holder through the form of using the mark without rights, using a mark which has a similarity in essential with prior registered mark, also changing the sign of a certain mark to create an element of antics thus, it can potentially damage the image or goodwill of the original marks. Parody of trademark which can be categorized as an infringement of mark under the Trademark Law is a parody of mark which basically has similarities with registered mark and/or well-known mark and is used as a mark in similar and/or related goods/services. And if the mark owner feels aggrieved, the mark owner can take legal action either in an amicable or unamicable way.
Thus, it is advisable for all readers to create an original mark to be a characteristic of the product to be used instead of making parodies of well-known marks that might cause losses in the event of a lawsuit from the owner of a well-known mark.
Please feel free to contact Am Badar & Am Badar if you have any further questions about the parody mark or any other questions regarding the mark, it is our pleasure to help you.
Source:
- Law Number 20 of 2016 concerning Marks and Geographical Indications
- https://www.lottfischer.com/blog/trademark-parody/
- Rahmi Jened, Hukum Merek (Trademark Law) Dalam Era Global dan Integrasi Ekonomi (Jakarta:Kharisma Putra Utama), 2015