Sattar Buksh – Parody? Or Dilution Of Trademark?
“Starbucks and ‘Sattar Buksh’ is no mystery — mainly because it is a deliberate marketing tactic,” a famous newspaper, The Express Tribune – Pakistan, headlined. Well, no doubt, it was a massive and pretty bold step towards making their brand shine, however, could this tactic possibly land the owner of brand into legal suit for infringing upon someone else’s right?
Sattar Buksh was an impossibly well-planned parody of the renowned trademark Starbucks which gave it overnight fame spreading across the world through social media. Trademark rights are the lifeline of businesses so any unauthorized use of an owner’s trademark by third parties results in unquantifiable loss and damage to its goodwill and business, which is irreparable in nature[1]. Trademark laws provide protection to famous brands against dilution even if there is a clear indication that the goods of copied brands are emanating from different sources, regardless of the presence or absence of competition between the owner of a well-known trademark or other parties[2]. Trademark dilution occurs when two signifiers are similar and they lessen each other’s differential distinctiveness[3] or as well as their uniqueness. A Canadian court in the famous case of Clairol International Corp. v. Thomas Supply & Equipment Co. Ltd. has decided that goodwill can be depreciated through dilution even if there is no actual risk that consumer might be confused between the two marks[4].
In Pakistan, well-known marks are entitled to protection against the mark which is identical or deceptively similar and where the use of such a mark is likely to cause dilution of the distinctive quality of the well-known trademark. However, it is a settled principle that the highest degree of fame is required under section 86 (3) of Trademarks Ordinance 2001 to claim protection under dilution. For instance, although there is no global list of well-known trademarks, Coca-Cola, Google, Apple, McDonald’s, Microsoft, IBM, Citibank, Boeing and Toyota, etc. are said to qualify for such a list[5]. Traditionally, the factors which determine whether a mark possesses a certain degree of recognition include the period of use, the extent, the geographic reach of advertising and publicity of the mark, as well as the amount, volume and geographic extent of sales of goods or services offered under the mark.
As far as Sattar Buksh is concerned, this is not the first instance where Starbucks has been parodied as a brand. In 2014, the comedian Nathan Fielder launched a coffee shop under the parodied brand name Dumb Starbucks in Los Angeles after which the public and media went into a frenzy and turned it into a big hit. However, the shop was closed down later… Oh! No! Not for copying the brand but for operating without a licence. As far as the copying was concerned, Nathan Fielder apparently had the defense of parody art given under US law which of course ultimately had to be decided in the court of law. Parody usage of trademarks or the artistic expression of marks is quite prevalent all over the world and is normally adopted to make fun of, or comment on, or criticize famous brands. Parody of the marks gives the parodist an advantage of capitalizing at the expense of the parodied brand and attracting a large number of consumers.
Traditionally, the concept of parody or satire is applied in copyright law, however, under Pakistani copyright law there is no specific provision providing a defense for parody, but there is an exception concerning fair dealing under section 57 of the Copyright Ordinance which applies to the circumstances of criticism, review, research or private study. In contrast, under US law the defense against copyright or trademark infringement can be claimed as being a parody, other than the defense of fair use. However, in certain cases US courts have rejected the defense of parody and have held the use of trademarks disguised as parody or satire to be an infringement, as was done by the US federal court in People for Ethical Treatment of Animals v Doughney where the defendant had argued that his website, titled People Eating Tasty Animals, was a parody of the plaintiff’s People for the Ethical Treatment of Animals.
Besides this, in EU countries the parody of trademarks is now legal. Regulation (EU) No. 2015/2424 of the European Parliament and of the Council provides in its Recital 21 that:
“Use of a trademark by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters.”
Coming back to Sattar Buksh, soon after the launch of the parodied brand in Pakistan, Starbucks gained knowledge of their trademark and copyright violation and served a cease-and-desist letter to the proprietors which eventually made them change the trademark/ artistic expression while releasing this disclaimer on their Facebook page: “We have nothing to do with any foreign franchise nor do we want to categorize ourselves as mere coffee experts. We’re ‘Jutts of all trades’ and we cater to everyone!”
In my view, the parodists should be expecting a potential dilution claim by making the sale of their products under the parodied trademark, as trademark dilution can take place even if the consumers are able to differentiate between the different sources and also because there is no specific jurisprudence to protect parody brands in Pakistan.
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References:
[1] 2013 CLD 201 = PLJ 2013 Lah. 65 = PLD 2013 Lah. 10
[2] Section 2 (xiii) of the Trade Marks Ordinance, 2001
[3] Trademark Law and Theory: A Handbook of Contemporary Research (edited by) Graeme B. Dinwoodie, Mak D. Janis
[4] Clairol International Corp. v. Thomas Supply & Equipment Co. Ltd., (1968) 55 C.P.R. 176, [1968] 2 Ex. C.R. 552
[5] 2016 CLD 1864 (Dalda Foods (PVT) Ltd. Vs. M/s Shield Corporation Ltd.)
The views expressed in this article are those of the author and do not necessarily represent the views of CourtingTheLaw.com or any organization with which she might be associated.
