How far can someone prevent punning use of their name or trade mark?
A trade mark registration gives its proprietor a measure of control over how third parties can describe their wares. In the case of an identical mark used on identical goods and services, it’s a reasonably straightforward proposition. But as the marks and their respective goods/service begin to differ, you also need to prove an element of confusion. And confusion isn’t always a done deal, no matter how similar the marks might be.
We love a good pun as much as the next trade mark expert, so we were delighted to come across ‘Feyoncé, an online shop aimed at the newly-engaged i.e. fiancé(e)s. Ho ho…very funny…and clearly a knowing nod to well-known songstress and all-round marketing phenomenon, Beyoncé.
Wouldn’t the natural assumption be that Feyoncé-branded goods were somehow connected with Ms Knowles-Carter? Beyoncé and her marketing company BGK certainly feared so, and they sued Feyoncé for infringement, seeking summary (i.e. expedited) judgment on the grounds that Feyoncé didn’t have a legal leg to stand on. But the judge held that the case wasn’t such a slam dunk. Although Feyoncé had clearly chosen its pun-laden name in a nod to Beyoncé’s rather better-known brand (her ‘Beyoncé cachet’, if you will), this didn’t necessarily amount to infringement; that would require rational consumers to be led to believe – mistakenly – that Feyoncé’s products were actually sponsored by or affiliated with Beyoncé or BGK.
Although Feyoncé and Beyoncé are clearly very similar (the US Patent and Trademark Office has already refused to register FEYONCÉ on the basis of BGK’s pre-existing registrations for BEYONCÉ), the judge thought they may not be confusingly similar – the play on words could be so obvious that it dispelled any risk of confusion. In other words, a good enough joke may become punempeachable.
But even in the absence of confusion, a trade mark owner can still complain about ‘dilution’ i.e. unauthorised use which threatens to erode a mark’s distinctiveness. Again, the judge was not convinced that the clear similarity of the marks outweighed their obvious differences. None of this means Feyoncé is out of the woods, however. The wedding firm is still facing a full trial where all the facts will be carefully scrutinised in detail so that a considered decision can be reached.
We usually approve of trade mark owners policing their rights, but there are definite nuances in this case concerning freedom of speech, rights of parody etc. Should Beyoncé be entitled to gainsé any pun she disapproves of? That would fill us with dismé and convé entirely the wrong message about trade mark rights. We don’t wish to downplé the seriousness of brand enforcement, but we have to sé we’d be glad to see the court grant Feyoncé some leewé on the dé.