It can have escaped no one’s notice that the American presidential elections are in full swing. Campaigning in the Netherlands can get quite hard-handed, but they know a thing or two about it in the United States too. Just recently, Donald Trump’s son compared the Syrian refugee problem with a bowl of Skittles. Companies are often not too keen on their trademarks being used for political ends, but how far can they go in taking action against such practices?
The federal Trademark Act in the United States, the Lanham Act, makes it difficult to take action against the use of trademarks for political ends. In the case of MasterCard International Inc. v. Nader 2000 Primary Committee, Inc, the court ruled that: The legislative history of the Lanham Act clearly indicates that Congress did not intend for the Act to chill political speech. This case was brought in 2000 when MasterCard took the American presidential candidate, Ralph Nader, to court because his TV ads were very similar to the credit card company’s well-known Priceless ads. In the end, the court found that there was no question of trademark infringement in this case because it considered the American public capable of making a distinction between political and commercial advertisements. Confusion was therefore not an issue.
Hershey Chocolate Company, the manufacturer of the eponymous chocolate bars, did however succeed when it took action agains t a politician in 2015. Senator Hershey had used banners displaying the chocolate manufacturer’s famous wrappers. The Senator argued in court that the ads did not constitute an infringement because there was no question of use ‘in connection with the sale, offering for sale, distribution or advertising of goods or services’. Political activities are not goods or services, according to Senator Hershey. The court did not agree and ruled that infringement had occurred, given that political activities are services.
The Hershey case is of course not entirely comparable with Trump Jr.’s Skittles comment, since Trump Jr. was ‘only’ using the trademark for comparison purposes, whereas Senator Hershey had clearly appropriated the whole packaging of the chocolate bars to promote his campaign. On the basis of the above rulings, it is therefore hard to say whether Wm. Wrigley Jr. Company (‘Wrigley’), the owner of the trademark Skittles, could successfully take action against the Republic presidential candidate’s campaign. Wrigley has already let it be known that it considers the analogy of the Syrian refugee crisis to be inappropriate and that it would be refraining for further commentary on the matter. Presumably they will take no further legal or other action either.
Wrigley has not had an easy time of it lately. It had to take actionnot so long ago against the British company CMG Leisure Limited when it submitted a trademark registration for Skittle for Adult Toys.
Well-known and less well-known trademarks have occasionally been used in political campaigns on our side of the Atlantic Ocean too. Christian Louboutin’s high heeled shoes with the famous red soles were used in a campaign by Senator Van Dermeersch of Vlaams Belang in Belgium.
It will come as no surprise that the French fashion designer was none too pleased and took the senator to court. In this case, Louboutin argued that the use of the red soles was an infringement of his trademark registration for these red soles pursuant to Article 2.20.1d of the Benelux Convention on Intellectual Property (Trademarks and Designs).
Pursuant to the abovementioned article, the trademark owner can prevent third parties from using a sign for purposes other than those of distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the trademark.
The court found in this case that, without due cause, unfair advantage had been taken of Louboutin’s reputation by displaying the red soles very prominently on the poster. The use of the red soles had attracted the attention of the public much more strongly than neutral shoes would have done. Moreover, the repute of the trademark had been infringed since Louboutin had let it be known that he did not wish to be associated with such controversial themes. The court found that trademark infringement had indeed taken place.
This was not the first time that Vlaams Belang had been rapped across the knuckles. In 2014, a Belgian court found that the campaign ‘Westmal or halal?’ was an infringement of the trademark Westmalle because, without due cause, unfair advantage had been taken of the beer trademark’s repute and that its reputation had been infringed. The use of the te rm Westmal in combination with the Westmalle Trappist beer glass took unfair advantage of the Trappist trademark. The court found in addition that the use of a trademark in a political campaign (regardless of the intent) is an infringement of the trademark’s repute. One might wonder if this is perhaps too simplistic. The use of a trademark in a political campaign will almost always be an infringement because unfair advantage is taken from the repute of the trademark. This does not, by definition, have to lead to reputational damage, however. If a trademark is used in a less controversial campaign, the trademark’s repute need not always be damaged.
On the basis of the cases outlined above, it would appear to be easier for companies to take action against the use of trademarks for political ends in the Benelux than in the United States. This is hardly surprising given the importance attached to the first amendment in the United States.