The popular Irish fast-food chain 'Supermac's' recently had their Instagram and Facebook pages temporarily suspended after they used registered trade marks owned by the Gaelic Athletic Association (GAA) in an ill-fated April Fool's Day themed social media post. This incident creates fertile breeding ground to discuss the scope to use third parties' registered trade marks in the context of parodic use. This is an important topic for rights holders to understand if they intend to humorously use a third parties registered mark either on social media or in advertising. The incident also provides useful lessons for brand owners in responding to the parodic use of their registered marks.

Background

Supermac's took advantage of April Fool's Day on their social media channels by posting the below image of Croke Park, the main stadium and headquarters of the GAA located in North Dublin, with Supermac's own logos photoshopped onto the stadium. They jokingly claimed that the iconic home of the GAA would be rebranded as 'Supermac's Croke Park'. Supermac's have partaken in a April Fool's Day social media prank in previous years, where they have made similar humorous announcements using the well-known Aer Lingus and Copper Face Jacks Irish brands.

The context of this year's April Fool's joke comes on the back of another of the GAA's historic stadiums in County Cork, 'Páirc Uí Chaoimh', being rebranded in January as 'SuperValu Park' in partnership with the Irish supermarket chain. The significant public backlash received by the GAA for this rebranding, including by the Irish Tánaiste Micheál Martin, resulted in a compromise and the stadium was renamed to 'Supervalu Páirc Uí Chaoimh'. Much of this backlash was due to the historic ground being named after the deceased former GAA Director General, Pádraig Ó Caoimh, who had a significant impact on Gaelic Games in Cork and across Ireland. His family were also upset by the rebranding, with his grandson describing the "eradication of his legacy" as "galling". 

The prank post by Supermac's and the response from the GAA also takes place in the context of recent tension between the brands in relation to Supermac's use of GAA jerseys in advertising. While Supermac's does not sponsor the main national GAA organisation, they do provide significant front jersey sponsorship to the various Galway GAA teams. The GAA centrally manage the intellectual property rights of the various individual counties, including their crests which feature on each teams' jerseys, on behalf of the respective county boards. 

Supermac's were issued a cease-and-desist letter from the GAA requesting that they abstain from the use of the County Mayo crest in advertisements which they were running. In response, Supermac's continued to run the advertisements with the Mayo crest in question blurred out. Supermac's were however allowed to continue running unblurred advertisements involving the jersey of the Galway GAA team. At the time, the owner of Supermac's, Pat McDonagh, publicly called for clarity from the GAA on the scope of usage rights available to sponsors.

Trade Mark Infringement Claims Made by the GAA

The GAA claimed that Supermac's April Fool's Day posts were an infringement of their registered 'Croke Park' trade mark. This resulted in Supermac's Facebook and Instagram pages being suspended. The GAA's complaint was made through an internal Meta (parent company of Instagram and Facebook) process, as opposed to a traditional infringement action being made through the courts. Using such internal platform reporting tools can provide a rapid resolution for a brand owner facing infringement, but care must be taken when doing so in view of provisions in the Irish Trade Marks Act concerning groundless threats of infringement proceedings. The fact that Meta agreed to the GAA's request to take down Supermac's accounts also does not automatically imply that Supermac's actions were indeed trade mark infringement, as such a decision could only be made in the relevant courts.

The GAA later stated that any use of their registered trade marks is not permitted, regardless of whether such use was in a humorous context. The GAA also claimed in the same statement that their registered mark was evidently being used for the purposes of advertising by Supermac's.

Upon the suspension of their relevant social media accounts, Supermac's claimed that there was no breach of the GAA's trade mark rights and that the online posts were intended to be perceived as mere jokes. The owner of Supermac's also claimed that the GAA were being "surprisingly sensitive", and that the incident was merely a "storm in a teacup". They accordingly requested that their social media accounts be restored as a matter of extreme urgency, which took place four days after the incident. 

Did Supermac's Infringe Upon the GAA's Trade Mark Rights?

An initial important distinction which must be made relates to what registered trade marks are held by the GAA in Ireland and the European Union. The GAA are the proprietors of the registered word mark 'Croke Park', as well as for several logos which incorporate the word 'Croke Park' which are used in relation to the Croke Park brand.

However, they do not have a registered trade mark for the appearance of the physical stadium, as it can be difficult to register a mark for the appearance of physical items or places. Therefore, the use of an image of the stadium is not in itself trade mark infringement. Any potential infringement on the part of Supermac's will therefore stem from their use of the words or logos related to Croke Park, which are registered marks. 

On balance, there is no definitive answer as to whether Supermac's use of the GAA's marks was indeed trade mark infringement. Trade mark infringement is defined in section 14(1) of the Irish Trade Marks Act 1996 as: 

"A person shall infringe a registered trade mark if that person uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered."

The requirement for the sign to be "used in the course of trade" permits the use of registered marks in a parodic context unrelated to a commercial activity. The risk of infringement in this case would depend in part upon whether Supermac's use of the marks was considered to be during the course of trade. The GAA could potentially argue that the use of their marks was commercially motivated, as the purpose of the posts was to advertise the Supermac's brand by freeriding on the reputation and goodwill built up by the GAA in their trade mark rights. In the earlier trade mark related dispute involving the use of a registered mark owned by the GAA on jerseys in an advertisement, the GAA released a statement stating that they "view this activity as ambush marketing, by passing off an association that does not exist and as exploitation of the logos and crests for their own commercial gain". This suggests that the GAA would argue that Supermac's April Fool's Day posts were use of the Croke Park sign in the course of trade. 

Conversely, Supermac's could potentially argue that the use of the GAA's marks was not in a trade mark sense and that it therefore was not infringement. One cannot infringe upon a registered mark where it is not being used in the course of trade, for example, if the word 'Croke Park' was used in a descriptive sense in a newspaper article, this would not be infringement of the registered 'Croke Park' trade mark. Supermac's may also argue that the sign was not being used for commercial purposes and therefore there was no infringement. There is however some uncertainty under Irish and EU law on whether humorous, satirical or parodic uses of a third-party mark are infringing, as discussed in greater detail below. 

Using Third-Party Registered Marks in the Context of Parody 

Parodies are protected expressions under the right to freedom of expression. While there is no specific legislative freedom of expression or parody exception for trade marks in the UK, Ireland or EU, a recital to the EU Trade Mark Directive provides that:

"Use of a trade mark by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters."

This provision attempts to balance the rights of trade mark proprietors as well as ensuring respect for freedoms of expression. However, it does not provide a direct exception for parody in EU trade mark law. Domestic EU courts, such as in France and Italy, have typically held that the use of a protected mark for the purposes of parody, humour or other forms of expressive use in a commercial setting will typically lead to a finding of trade mark infringement. This may apply even if the proprietor of the mark is not a direct competitor in the same market. However, cases such as one involving Citroen in France, the Court placed emphasis on the context of the humorous uses of protected marks when determining whether there was infringement. This case noted that parody is distinct from the real world and that freedom of expression should prevail where consumers will not be confused. 

A recent referral to the Court of Justice of the European Union (CJEU) in a Belgian case involving IKEA (Inter IKEA Systems BV v. Vlaams Belang and others) may provide further clarification on the interrelationship between freedom of expression and trade mark rights. In this dispute some of IKEA's registered trade marks have been used by a third party to comment upon migrant and immigration reform in Belgium. Accordingly, the CJEU have been asked to clarify the criteria which should be considered when balancing these rights. While this case deals with the use of a registered mark in a political context, rather than the purely humorous context of Supermac's, it may nonetheless provide further clarification regarding which contexts of using protected marks will be considered infringing. 

In the Deckmyn case, which considered parody in the context of copyright law, the CJEU put forward a proportionality test, to balance these conflicting rights, whereby all the circumstances involved in the use of the intellectual property rights in question must be considered, including the intention behind the use. The definition of parody and approach to striking a fair balance between the IP owner and the parodist set out in Deckmyn could provide a useful guidance for advertisers to follow to avoid infringement in the absence of a trade mark specific parody exception. Questions should be asked such as whether the alleged infringer intended to free-ride or cause harm through disguised trade mark infringement. The intent and context of the use are paramount considerations. Some of the other circumstances which may be relevant include whether the reputation of the rightsholder has been damaged and that the use in question can be viewed or was intended as being humorous. 

To conclude, advertisers should be aware that the use of a protected mark for the purposes of parody, humour or other forms of expressive use in a commercial setting may lead to a finding of trade mark infringement, even if the proprietor of the mark is not a direct competitor in the same market. While infringement may not extend to satirical and parodic uses of protected marks upon examination of the context and intent of their use, advertisers should still be cautious when making brand parodies, such as the above incident by Supermac's. This is particularly pertinent given the lack of judicial clarity on the interrelationship between trade mark infringement and parody. 

Conversely, trade mark owners may also want to take note of the significant Irish news and media coverage that has been received by both the GAA and Supermac's in relation to this dispute. Whilst it is within the GAA's rights to monitor and police the use of their intellectual property, a public perception of heavy-handed enforcement can also lead to what is known as the 'Streisand effect'. This refers to unintended consequences of an attempt to hide, censor or remove information, where such an attempt may backfire and increase public awareness of the incident.

The GAA's complaint arguably has brought more attention to Supermac's social media posts than if the posts were allowed to stay online. Supermac's may consider that their April Fool's Day posts were successful marketing, as despite the temporary suspension of their social media pages, they have garnered much greater publicity and attention to their brand than if the posts had gone unaddressed by the GAA. The below image evidences their capitalisation of this public attention. Rightsholders should therefore be cautious to refrain from being too heavy handed when enforcing their intellectual property rights such that they will experience damage to their own reputation by way of negative publicity and media attention. 

The key takeaways for advertisers when using third party marks in a humorous context are therefore as follows:

• Infringement can arise where protected marks are used in a parody during the course of trade. To reduce the risk of infringement when making use of a mark in a parody, advertisers should be careful to ensure their marketing does not give rise to confusion as to the origin of goods or services. Infringement will also be less likely where registered marks are not used in relation to any commercial activities. 
• Context is crucial to the use of the protected marks in a parody. To avoid liability, it must be abundantly clear that the intent is humorous and not to damage any goodwill and reputation in the protected marks by way of a veiled trade mark infringement. 
• The reputation of trade mark proprietors should not be significantly denigrated by the parodic expressions using their protected marks, as this will significantly increase the likelihood of a response by the trade mark owners. 
• Trade mark owners should also be careful in any legal response to a parody of their brand, both to ensure that they do not breach any rules in relation to groundless threats and to consider the possibility of giving rise to the 'Streisand effect'.