When iconic brand appears in an advertisement, it can not only attract attention, but also carry legal risks. It is worth knowing when brand owners can take action and what penalties may be applied for unauthorised use. Kristóf Ormos, Oppenheim’s attoney-at-law, analyses specific examples.
Who can use another brand’s logo?
A few years ago, Ferrari sued fashion mogul Philipp Plein for featuring the Italian automaker's world-famous brand alongside shoes he designed in his social media posts. The Maranello-based company considered that the advertisements published were both exploitative and potentially damaging to the reputation of the Ferrari brand. Although such cases are relatively rare, from time to time high-end products or brands similar to Ferrari's appear in various advertisements and marketing materials, which seem to justify an investigation into what Philipp Plein might have done wrong.
By now, the products of certain global brands - think of phones and laptops with an apple mark - have become so much a part of everyday life that we don't necessarily realise that the name, logo and in many cases the shape of the product is the intellectual property of someone else, in the vast majority of cases the manufacturer. We normally don't have to worry about all this as long as we use the product for its intended purpose and not, for example, as a centrepiece in a food commercial. In the latter case, a number of other considerations may need to be taken into account.
Speaking of Apple, the company explicitly states in the legal documents published on its website that it does not support the use of images of its products for marketing purposes, as this could give the impression that the company is affiliated with the company in whose advertisement the product appears. “Although this position may at first sight appear to be strict, the Hungarian legal environment also suggests that there are a number of legal remedies available to manufacturers as rightholders for the unauthorised use of their brand in advertising and marketing material. These tools are primarily to be found in trademark law and copyright law” – says Oppenheim’s expert.
What can a trademark owner do?
If the name, logo or even the shape of a product is protected by a trademark, the trademark owner may contest unauthorised use, provided that it happens in the course of trade and in relation to the goods or services for which the trade mark is registered. In addition, the Hungarian trademark act specifically mentions the use of a trademark with reputation, i.e. a trademark which is known to the majority of the public, in order to take unfair advantage of the reputation of such sign. The requirement of similarity of goods and services does not necessarily apply to such trademarks: it is unlikely that the reputable Ferrari logo could be used as shoe storage.
The copyright act allows the manufacturer (author) to take action against the unauthorised use of a copyrighted work - which could be a laptop, a bottle of champagne or a car - even in the absence of (or in parallel with) trademark protection, on the basis of the exclusive right of use that the manufacturer (author) has. The nature of the goods and services concerned is not relevant for the enforcement of copyright, and the reputation of the copyright work is relevant only in the context of monetary claims.
Similar sanctions may apply in the case of trademark or copyright infringement: in the case of a large advertising campaign with a large budget, not only damages but also an injunction to cease the campaign and a ban on the use of the advertising material produced may be particularly painful for customers.
“Although the law provides for the possibility of action by rightholders, in practice this rarely happens; it is usually up to the temperament of the rightholders to decide whether a particular use goes beyond their tolerance limit. Nevertheless, in all cases, it may be worth taking into account the risk of using branded gadgets, cars, cosmetics or beverages, with the risk can be most easily avoided by obtaining the prior consent of the brand owner. If this is not possible, it is worthwhile to find out what the brand's expectations are regarding the use of its products in third party marketing materials and to consider whether the use of the product in question in an identifiable way is really necessary for the success of the advertising.”
Let's try to avoid what happened to Philipp Plein.