April Fool’s joke spurs trade mark dispute in Ireland

According to media reports, Supermac’s post, which was published on Facebook and Instagram, consisted of a digitally-altered image of Croke Park, the home of the GAA. The image of the stadium was altered to include Supermac’s branding and was accompanied by the wording ‘Supermac’s Croke Park’, implying that there had been a re-branding of the stadium.

The GAA did not see the funny side and issued a complaint to Meta. Meta initially suspended Supermac’s accounts before later reinstating them.

Here, we analyse how we think the GAA’s claim would play out under Irish trade mark law.

Does Supermac’s “use” of ‘Croke Park’ infringe under Irish trade mark law?

'Croke Park’ is a registered European trade mark, registered as two word marks.

To succeed in bringing a trade mark claim, the GAA would first need to establish that use of the registered mark is infringed in accordance with section 14 of the Irish Trade Marks Act 1996. To do that, the GAA would have to show that use is in ‘the course of trade’.

Use in the course of trade occurs in the context of commercial activity with a view to economic advantage and not as a private matter. Supermac’s might argue that its use was part of an April Fool’s joke, but it is certainly arguable that Supermac’s use occurred as a part of a commercial activity for commercial gain. Likewise, any claim by Supermac’s that the use of the brand was not used in a “trade mark sense” – that is, as a badge or guarantee of origin – is unlikely to succeed.

Category of infringement

There are three categories of infringing acts in the Irish Trade Mark Act that the GAA could use to ground a claim of trade mark infringement.

To demonstrate double identity infringement, the GAA would not only have to show that the Croke Park mark infringed is identical but also that the services for which it was used by Supermac’s are identical for which the mark is registered. As a result, this ground would only apply if the Croke Park mark was registered for advertising or promotional related services. The Croke Park mark is not registered for these services so the GAA may encounter difficulties with a claim that the services are identical.

In addition to proving that the marks are similar and identical for similar or identical goods, the second category requires proof of consumer confusion. As a result, it is more likely that the GAA would rely on the third ground, which relates to reputation: where use of the mark must be without due course and take unfair advantage or be detrimental to the registered mark.

Is parody permitted under trade mark law?

The issue that arises with brands being parodied is the potential dilution of the trade mark. Unlike in copyright law, there is no explicit defence under trade mark law for parody, though it is possible that an argument could be advanced that a parody exception does exist – see more information in the defences section below. 

Dilution of a trade mark refers to the unauthorised use of a trade mark that is likely to weaken the distinctive quality of a well-known mark. Rights holders seeking to claim that their mark has been diluted would need to adduce evidence that their mark is deemed highly reputable and well-known in the jurisdiction. It is likely that the GAA’s mark would meet this standard in Ireland, as it is considered a household name.

The most common form of dilution is what we call ‘blurring’, which occurs when the lines between two previously unassociated marks or brands begin to ‘blur’, and they become associated with one another in people’s minds. In this regard, it is relevant that Supermac’s sponsor the Galway county GAA team and its mark appears on their jerseys. It is likely that this factor would exacerbate the risk of ‘blurring’ or increase the perceived  association between Supermac’s and the GAA.

It is also possible that the GAA could claim Supermac’s was attempting to ‘free ride’ on its recognisability. ‘Free-riding’ is the name given to another form of dilution that refers to unauthorised use of a well-known trade mark on unrelated goods or services for the purpose of creating a positive association with those legitimately carrying the well-known mark. Infringement and dilution are distinct concepts, so there would be no need for the GAA to show consumer confusion.

Defences – honesty required

If it is claimed that Supermac’s used the Croke Park trade mark in the course of trade, thereby amounting to infringement, Supermac’s could seek to rely on certain statutory defences to infringement – including the defence in section 14(6) of the Irish Trade Mark Act. Section 14(6) permits the use of a trade mark “for the purpose of identifying goods or services as those of the proprietor or licensee of the registered trade mark”.

However, to succeed with this defence, Supermac’s would need to prove that its use of the GAA’s mark was in accordance with honest practices in industrial or commercial matters and that its use of the mark did not, without due cause, take unfair advantage of, or cause detriment to, the distinctive character or reputation of the GAA’s trade mark.

There are alternative statutory defence that Supermac’s could potentially cite if faced with a claim. It is also possible that Supermac’s could claim its use constituted non distinctive use for artistic expression in accordance with honest practices – which a non-binding recital to EU trade mark law, from which Irish trade mark law derives, allows for. In that sense, Supermac’s could argue that a parody can be classified as artistic expression – this is an argument that the Irish courts have not yet considered.

Ultimately, Supermac’s would only be successful if it can be shown that its use of the registered trade mark under law was honest. Use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if, for example it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner; it affects the value of the trade mark by taking unfair advantage of its distinctive character or repute; and it entails the discrediting or denigration of that mark.

Lessons

This case provides a classic example of how an apparently harmless joke on social media can give rise to legal risks. The risk of trade mark infringement should be factored into corporate social media policies and businesses should think twice before using another party’s registered trade mark.

Co-written by Jane Bourke and Hannah McLoughlin of Pinsent Masons.