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What the law says about effects of trade mark parodies

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An artist at work. File Photo | Cyril NDEGEYA | NMG

Freedom of expression is a fundamental right enshrined in Article 33 of the Constitution. It underscores the aspirations of Kenyans to express ideas freely including artistic creativity.

Classic examples of success stories include popular local political satirical show XYZ.

However, the freedom of expression is subject to limitations; propaganda for war, incitement to violence, hate speech, advocacy of hatred or a limitation by a statute of Parliament.

Creations of the mind, though intangible, can morph into intellectual property (IP) under Articles 11 and 40 of the Constitution.

READ: New law to punish copyright thieves

A trade mark is a form of IP that is expressed in words, logos, phrases or graphic symbols used by manufacturers or sellers to distinguish their products from those of others preventing third parties from branding their goods or services in a similar way.

On the other hand, parodies are transformative uses of a well-known trade mark/service mark for purposes of satirising, ridiculing, critiquing, or commenting on the original work. Jurists and scholars differ on the question of balancing freedom of expression when considering parodies against trademark protection.

Trade mark law, by its very nature creates an arguable limitation to the freedom of expression protecting trade mark owners, assignees and licensees from brand dilution through tarnishment - which might suffice in the form of parodies.

This creates a thin line for jurists to determine the borderline between freedom of expression in parodies and brand dilution. Little consensus exists on determinations on what amounts to freedom of expression and trade mark infringement arising from parodies.

Protected in law

In some jurisdictions such as the US, parodies are protected as free speech. In South Africa, parodies are allowed to the extent that they satisfy the requirement for fair dealing.

On the flipside, parodies may cause devastating effects on the trade mark. Souter, J in the US case, Campbell v. Acuff-Rose Music, Inc, (1994) agreed that sometimes a parody might kill demand for the original.

Further, parodies might quite legitimately be aimed at garrotting the original, destroying it commercially and artistically. It is therefore vital for courts to distinguish between ‘biting criticism that merely suppresses demand and infringement.

The Trade Marks Act Kenya legally recognises and validates trade mark protection in Kenya.

However, there isn’t much local jurisprudence on the interplay between trade mark parodies and trade mark infringement. In fact, the Trade Marks Act does not expressly recognise trademark parodies.

Perhaps it was feared that allowing trademark parodies in Kenya would injure the commercial stand of the owners.

However, it should be noted that an idea should never be opposed only on the basis that society finds it unpalatable. Trademark parodies are within the constitutional realm of free speech and thus, they need not be expressly recognized in the statute.

It would, however, aid greater legal clarity if the statute provided for trademark parodies.

Nevertheless, a trademark parody should not be intended for commercial purposes lest it amounts to infringement. Even though sometimes offensive, parodies do convey a message.

Trade mark parodies prompt us to laugh at the images and associations linked with the trade mark.

Rosana is a legal intern at NMG while Etale is an LLM Candidate at University of Barcelona