By Arpit Kalra and Ananyaa Banerjee
A trade mark opposition filed by the world renowned fashion house Hermes International against the word mark HAIRMES was recently refused by the Japan Patent Office (hereinafter referred to as the “JPO”) on grounds of no likelihood of confusion and dissimilarity. The word mark HAIRMES was applied for by the company Dog Diggin Designs, LLC with the JPO in respect of pet accessories. Details of the said mark are tabulated below for ease of reference:
|Pet bed, pet animal pillow, pet cushion.
Dog Diggin Designs, LLC
- Based in Las Vegas, Dog Diggin Designs, LLC is a pet friendly company which is admittedly engaged in designing and selling parody dog toys and beds, parody being the operative word. Interestingly, their website https://www.dogdiggindesigns.com/ showcases products which are without a doubt parodies of well-known brands, for example:
|Dog Diggin Designs, LLC
- Hermes International is a famous fashion brand which is known for its luxury leather and silk products, fragrances and jewelry.
- Hermes argued that there exists sufficient likelihood of confusion amongst the relevant consumers in Japan, owing to the high degree of similarity between its well established name/trade mark HERMES and the opposed trade mark HAIRMES.
The two marks as used on their respective products are depicted below:
|Dog Diggin Designs, LLC
- Hermes also relied on the remarkable reputation and popularity of its HERMES brand in the fashion industry, and contended that Dog Diggin Designs, LLC has adopted the mark HAIRMES in bad faith to free-ride upon its reputation by selling pet supplies with packaging design and color similar to Hermes.
Japan Patent Office’s decision
In its decision dated December 01, 2021, even though the JPO Opposition Board gave due credit to Hermes’ widespread recognition and popularity, it decided the matter in favor of the opposed trade mark HAIRMES. The JPO took into account the visual, phonetic and conceptual dissimilarity between the parties’ marks while arriving on the decision, and held that relevant consumers would be able to distinguish between HERMES and HAIRMES due to difference of the letters “E” and “AI” in the respective marks.
Further, while HERMES denotes “a Greek god of commerce, eloquence, invention, travel, and theft who serves as herald and messenger of the other gods”, HAIRMES has no dictionary meaning, and thus, both the marks would evoke different impressions in the minds of the consumers. With respect to similarity in the packaging design and color, the Board opined that the very reputation and worldwide popularity of Hermes negated any chances of confusion on part of the public.
A trend in favor of phonetically similar marks?
The decision of the JPO in favor of HAIRMES is not the first instance wherein phonetically similar marks have been protected. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC (2007), the mark CHEWY VUITON, which was being used by Haute Diggity Dog to sell inexpensive dog toys was in question. The Court of Appeals held that CHEWY VUITON, while evoking the famous LOUIS VUITTON branded handbags, denoted “dog chews”, which was clearly not being manufactured by Louis Vuitton. Hence, CHEWY VUITON was held to be a successful parody of LOUIS VUITTON.
Similarly, the CHARBUCKS mark was held to be distinguishable from the famous STARBUCKS marks in Starbucks Corporation v. Wolfe’s Borough Coffee, Inc. (2009).
Blatant imitation in the name of ‘Parody’
The dictionary meaning of ‘Parody’ translates to an imitation of the style of a particular writer, artist, or genre with deliberate exaggeration for comic effect. The defense of ‘Parody’ to trade mark infringement actions has been gaining traction over the years, whereby obvious copies of famous brands have been protected under the garb of fair use.
The Japanese IP High Court refused the request for invalidation filed by Puma against the mark [i], which was being used in respect of t-shirts and caps. Even though Puma had filed surveys demonstrating that many customers associated the parody mark with , the High Court did not find the marks to be confusingly similar.
Further, a Ninth Circuit Court in the United States held ‘Bad Spaniels’, a parody dog toy, to be an “expressive work” protected by the First Amendment. The US Supreme Court then denied Tennessee whiskey maker, Jack Daniel’s petition against the circuit court’s ruling despite that the mark clearly appears to be copied from the Jack Daniel’s trade mark .
In fact, the Indian judiciary has also accepted the defense of ‘Parody’ to trademark infringement claims. In the case of Tata Sons Limited v. Greenpeace International (2011), the defendant had used the brand name of TATA with its logo in its video game called ‘Tata versus Turtle’. The Delhi High Court accepted the defendant’s submission that such use would not tarnish Tata’s reputation nor amount to trade mark infringement, since it qualified under fair use as a ‘parody’.
Therefore, it appears that ‘Parody’ products are here to stay!
[i] SHI-SA is a Japanese traditional lion-dog statue.