AIPPI Study Question Q298 – Parody as a defence to trademark infringement

09 | 2026

Berichte | Rapports

Report of the Swiss Group

Members of the working group: Lara Dorigo (chair), Pascal Fehlbaum, Patrick Gürtler, Laura Rikardsen, Niklas-Fenio Buck.

The english translation of the summary is included on Swisslex and legalis only.

Study Guidelines

by Ralph Nack, Reporter General

Guillaume Henry and Johanna Flythström, Deputy Reporters General

Rafael Atab, Klaudia Blach-Morysinska, Mamta Rani Jha, Yanfeng Xiong

Assistants to the Reporter General

2026 – Study Question

Parody (and freedom of expression) as a defence to trade mark infringement

Introduction

1)

The protection conferred by a trade mark allows its proprietor to prevent third parties from using identical signs for identical goods or services as well as identical or similar signs for identical or similar goods or services where such use is likely to cause confusion, or, in the case of reputed trade marks, where such use takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the mark or tarnishes the reputation of the reputed trade mark or its owner. For the purpose of this Study Question, claims related to infringement of trade mark rights and anti-dilution claims will be collectively referred to as «trade mark infringement». This protection ensures the inter alia origin and quality functions of trade marks, safeguards investment, and prevents unfair competition.
2)

However, in contemporary society, trade marks have evolved from purely commercial indicators to social and cultural symbols. They appear in art, politics, humour, and digital communication. The growing use of trade marks for parody – through memes, artistic reinterpretation, political campaigns, or satirical merchandise – raises the question of how far parody (and freedom of expression) can serve as defence to trade mark infringement.
3)

Unlike copyright law, trade mark regulations seldom include an explicit «parody» exception. It is up to courts to decide if parody can justify the use of a trade mark. The challenge lies in balancing these competing interests: the trade mark rightsholder’s to protect the origin and reputation functions of the mark, and third parties’ right to engage in humorous, artistic, or political commentary or critique.
4)

This Study Question explores how national laws and courts address parody and freedom of expression as defences to trade mark infringement and whether there is a need for international harmonisation.

Why AIPPI considers this an important area of study

5)

Parody sits at the interface of intellectual property and fundamental rights. The issue is particularly relevant in a digital environment where brand references have become part of everyday discourse and where parodic uses can reach global audiences instantly.
6)

The increasing tension between trade mark protection and parody affects a wide range of stakeholders: trade mark rightsholders, creators, activists, and consumers. For trade mark rightsholders, parodies may risk dilution, damage to the distinctive character, or reputational harm; for creators, they may be an essential form of commentary and social critique. Courts worldwide have struggled to reconcile these interests consistently, often arriving at divergent outcomes.
7)
AIPPI considers that greater clarity and possibly harmonisation are needed to:
- –
  
  Define what qualifies as a parody in the trade mark context;
- |–
  
  Determine when expressive or humorous use should find safe harbour from liability; and
- –
  
  Establish guiding principles for balancing exclusive rights over a trade mark and freedom of expression.

Relevant treaty provisions

8)

There is no international treaty provision that expressly recognises parody as a defence to trade mark infringement.
9)

The TRIPS Agreement in Art. 17 permits limited exceptions to trade mark rights, provided that they take account of the legitimate interests of both the trade mark owner and third parties. Parody may be considered one such «limited exception.»
10)

Also, while Art. 8 of TRIPS Agreement does allow Members to «adopt measure necessary (…) to promote public interest in sectors of vital importance to their socio-economic (…) development», such measures must be «consistent with the provisions of [TRIPS] Agreement».
11)
The Paris Convention contains no equivalent rule. However, article 10 bis of Paris Convention does provide for the need for «effective protection against unfair competition», indicating that «any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition». The following examples are listed in such article:
- «(i)
  
  all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
- (ii)
  
  false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
- (iii)
  
  indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.»

Scope of this Study Question

12)

This Study Question aims to examine how parody (as a form of freedom of expression) operates as a defence, and under which circumstances, in relation to trade mark infringement, both in use (e.g. parody merchandise, art, political or humorous expression, online content) and in registration (applications for parody marks).
13)

The use of parodies in the domain of copyrights, designs and any other intellectual property rights is out of the scope of this Study Question.
14)

Parody (and freedom of expression) should be analysed primarily within trade mark law, while acknowledging and addressing the role of unfair competition only insofar as they affect the effectiveness of parody as a defence to trade mark infringement in practice. Criminal law is outside the scope of this Study Question. This Study Question does not address private international law issues.

Previous work of AIPPI

15)

AIPPI has addressed related topics in several Resolutions:
16)

According to Resolution on Q245 (Rio de Janeiro, 2015), the protection afforded to the trade mark rightsholder should not be absolute. Limitations and defences should be available in accordance with trade mark law generally, and at least in parody and/or freedom of expression case. The burden of proof for such limitations and defences should be on the party invoking the limitation or defence.
17)

The Resolution on Q168 (Lisbon, 2002), relating to «use as a trade mark» provides that «use of trade marks in parody should be subject to the same analysis as other trade mark use».
18)

The Resolution on Q188 (Berlin, 2005), which generally addressed the balance between trade mark protection and freedom of expression, states that «it should be possible, in principle, to invoke freedom of expression as defence in trade mark cases in exceptional circumstances».
19)

The Resolution on Q195 (Singapore, 2007), on «Limitations of Trade mark Rights», states that trade mark right limitations should be allowed only to the extent that the use of another’s trade mark by a third party does not cause dilution of the mark. On its turn, the requirements and extent of protection associated with dilution are addressed by the Resolution on Q214 (Paris, 2010). This Resolution sets out that «trade marks having recognition or fame» should be protected against dilution by blurring and dilution by tarnishment.
20)

The Resolution on Q291 (Hangzhou, 2024) addresses defence of parody in copyright and recognizes «parody as a form of freedom of expression», in the copyright context. It also sets forth certain criteria to determine when a valid defence is available for the author of the parody.
21)

The present Study Question builds upon these principles in the specific context of trade mark law.

Discussion

22)

Comparative analysis reveals clear divergence among national approaches to parody as a defence to trade mark infringement. The differences arise from varying constitutional traditions, statutory wording, and judi|cial assessment on the balance between freedom of expression and property rights. While the underlying conflict is universal – balancing exclusive trade mark rights with expressive freedoms – the solutions adopted across jurisdictions range from explicit constitutional protection to near-total absence of a parody defence.
23)

In the European Union, parody is not expressly codified as a defence under trade mark legislation. However, Recital 27 of the 2015 Trade Mark Directive (EU) 2015/2436 and Recital 21 of the EU Trade Mark Regulation (EU) 2017/1001 provide interpretative guidance, stating that trade mark protection should not interfere with the exercise of freedom of expression, particularly artistic expression, provided the use accords with «honest practices in industrial or commercial matters.»
24)

In practice, courts in Member States have relied on this principle and on concepts such as use in the course of trade, use as a trade mark, due cause, and honest practices to assess whether parody is permissible. Where use occurs outside the course of trade – for example, in political, artistic, or satirical expression – it may fall entirely outside the scope of trade mark protection, therefore avoiding an infringement finding.
25)

Nevertheless, when the parody is used in commerce, courts must balance freedom of expression against the trade mark’s core functions. In Deckmyn C-201/13, concerning copyright parody, the CJEU emphasised that parody requires a fair balance between the rights of the right holder and the freedom of expression of the user. This reasoning has indirectly influenced trade mark analysis.
26)

The pending IKEA/Vlaams Belang C-298/23 reference before the CJEU is expected to clarify the scope of permissible political parody in trade mark use. The case concerns the use of the «IKEA» mark and visual identity by a Belgian political party in a campaign advertisement. The CJEU’s forthcoming ruling may define the limits of freedom of expression and political speech under EU trade mark law and could set a benchmark for balancing fundamental rights and trade mark protection within the internal market. In the Opinion of Advocate General Szpunar, the key issue is reconciling freedom of expression, including political and parodic expression, with the protection of well-known trade marks. The Advocate General emphasizes that the concept of due cause can serve as a flexible mechanism for balancing these rights, taking into account criteria such as the nature of the expression (commercial vs. non-commercial), competitive motives, public interest, the intensity of the use, and the impact on the trade mark’s reputation. Additionally, the assessment of whether the use of the trade mark falls within the «course of trade» or «in relation to goods and services» may influence the extent of protection granted to the trade mark in the context of parody.

27)

Germany operates within the EU legal framework and also under strong constitutional protection of free expression (Article 5 of the Grundgesetz). German courts have generally distinguished between artistic or political expression, which enjoys broad protection, and commercial parody used as a trade mark, which typically infringes.
28)

In PUMA/PUDEL case, the defendant registered «PUDEL» (German for «poodle») together with a leaping-dog logo closely imitating PUMA’s famous leaping-cat mark for clothing. The Federal Court of Justice held that, despite the humorous intent, the registration took unfair advantage of PUMA’s reputation and was likely to dilute its distinctiveness. The court reasoned that freedom of expression does not encompass the right to register another’s mark as a source indicator for similar goods.

29)

French courts distinguish between non-commercial parody in public-interest expression, which can be lawful, and commercial parody on goods, which is generally infringing. In Esso vs. Greenpeace France, Cour de |cassation upheld lower decisions rejecting Esso’s claims over the altered «E$$O» logo used in environmental campaigns, holding that such use fell within freedom of expression and did not amount to trade mark infringement. This judgement confirms that French law permits parody where the use serves a critical or artistic purpose and does not mislead consumers as to commercial origin.

30)

The United States recognize parody through First Amendment jurisprudence and the Lanham Act. Pursuant to 15 US Code § 1125(c)(3) explicitly exempts «any fair use, including … parody, criticism, or commentary» provided the use is not as a designation of source. Under Rogers v Grimaldi case, 875 F.2d 994 (2d Cir. 1989), use of a trade mark in an expressive work is lawful unless it a) has no artistic relevance to the work, or b) explicitly misleads consumers as to source.
31)

In Louis Vuitton Malletier S.A. v Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), the court held that «Chewy Vuiton» dog toys were a clear parody and neither confusing nor dilutive. More recently, the U.S. Supreme Court in Jack Daniel’s Properties Inc. v VIP Products LLC, 599 U.S. 140 (2023), ruled that when an alleged parody itself serves as a brand identifier (e.g. «Bad Spaniels» dog toy), ordinary likelihood-of-confusion analysis applies; the Rogers threshold does not automatically protect it. However, the Court also stated that «a trade mark’s expressive message – especially a parodic one … – may properly figure in assessing the likelihood of confusion.» The pending litigation deals with a dog toy shaped similar to a Jack Daniel’s whiskey bottle and label, but with parody elements, which Jack Daniel’s asserted constituted trade mark infringement and dilution. On remand, the lower court held against Jack Daniel’s on trade mark infringement because the parody created no likelihood of confusion. But it held in favour of Jack Daniel’s on trade mark dilution, because the parody constituted dilution by tarnishment. The decision is on appeal, which includes a constitutional challenge to the dilution-by-tarnishment statute.

32)

Indian courts have explicitly linked parody with constitutional free speech under Article 19(1)(a) of the Constitution. In Tata Sons Ltd v Greenpeace International, the court refused to enjoin Greenpeace’s online game «Turtle v Tata,» which used the Tata logo to criticise the company’s environmental practices. The court held that the use was non-commercial, did not constitute trade mark use, and fell within protected expression. This decision remains the leading Indian precedent acknowledging parody as a form of legitimate commentary.
33)

Japan’s Trade Mark Act lacks any exception for parody or expressive use.The Intellectual Property High Court confirmed in Franck Muller v Frank Miura, that parody does not automatically shield use from infringement; similarity and likelihood of confusion are decisive. The court reinstated registration of «Frank Miura» after finding the marks not sufficiently similar, without recognising a general «parody defence.»
34)

In Brazil, in the Johnny Walker x Joao Andante case, the Superior Court of Justice recognized that a parody, which merely reflects a translation of famous mark and seeks to freeride the notoriety of the third party’s brand should be recognized as an infringement of trade mark rights. On the other hand, this same court, when deciding upon a case referring to the use of a «play on words» on the name of a famous newspaper in connection with a non-commercial blog criticizing such news media, decided that such non-commercial use falls out from the scope of trade mark protection or unfair competition, being resolved under the principles of freedom of expression and copyright fair use and parody exception (as the mark was also the title of a news publication).
35)
Bearing above in mind, across all jurisdictions, three decisive dividing lines seem to emerge from various court assessments on parody-related disputes:
- a)
  
  Commercial vs. non-commercial use: may parody be tolerated in art, commentary, or activism but not when the altered mark is used to sell goods?
- b)
  
  Expressive vs. trade-mark use: does liability depend on whether the trade mark functions as an indication of origin?
- c)
  
  Reputation and dilution: while some jurisdictions seem to recognise statutory fair-use exemption, others appear to rely on «due cause» balancing, |with some civil-law systems apparently protecting reputation more strictly.

Across these systems, proportionality has become a guiding principle: courts aim to prevent genuine consumer confusion and unfair exploitation while avoiding undue restrictions on artistic or political expression.

You are invited to submit a Report addressing the questions below.

Questions

I. Current law and practice

Please answer all questions in Part I on the basis of your Group’s current law.

1) Does your law or case law recognise parody or freedom of expression as a defence to trade mark infringement. YES or NO. Please comment, addressing, in particular, if such defence is:

a)

statutory,
b)

judicially developed,
c)

based on general principles such as honest practices or constitutional rights?

Under Swiss law, parody or freedom of expression is not recognised as an explicit statutory or autonomous defence to trade mark infringement. However, constitutional rights may indirectly influence the interpretation and application of trade mark law through judicial balancing.

a) Statutory basis

No, the Federal Act on the Protection of Trade Marks and Indications of Source (TmPA) does not contain an explicit exception for parody, satire, or freedom of expression in trade mark infringement cases. The statute primarily protects the exclusive rights of the trade mark holder, focusing on issues such as likelihood of confusion, exploitation of reputation, and dilution (Art. 13 TmPA). (F. Thouvenin/L Dorigo, in: M. Noth/G. Bühler/F. Thouvenin [Hg.], Stämpflis Handkommentar zum Markenschutzgesetz (MSchG), 2. Aufl., Bern 2017, MSchG 13 N 96 ff.).

b) Judicially developed defence

No, not as an autonomous doctrine. Swiss courts have not recognised a separate defence to trade mark infringement based directly on parody, freedom of expression, or freedom of art. However, the Swiss Federal Supreme Court (FSC) requires that private law be interpreted consistently with constitutional rights. This means that fundamental rights indirectly influence the interpretation of trade mark law, rather than operating as an independent defence.

Examples include:

–

FSCD 111 II 253: Right to strike, recognition of the indirect horizontal effect of fundamental rights in private law
–

FSCD 122 III 469: Chanel, interpretation of trade mark law in light of constitutional rights

Sources:

–

S. Lötscher, Die Markenparodie in Schriften zum Medien- und Immaterialgüterrecht, Bern 2016, 185 ff.
–

Thouvenin/Dorigo, MSchG 13 N 96 ff.

c) Constitutional and general principles

Yes (indirect influence). Although not an autonomous defence, constitutional rights influence the interpretation and balancing of interests in trade mark disputes.

Relevant provisions of the Federal Constitution of the Swiss Confederation include:

–

Art. 16 – Freedom of expression and information
–

Art. 17 – Freedom of the media/press
–

Art. 21 – Freedom of art
–

Art. 26 – Property guarantee (protecting trade mark rights)

Swiss doctrine explains that courts must balance these freedoms against the trade mark owner’s property rights. In legal literature, reference is made to parody cases, where several factors are relevant, including:

–

the purpose of the parody (criticism, entertainment, disparagement, or commercial exploitation);
–

whether the parody is recognisable as parody;
–

the impact on the mark’s origin function, distinctiveness, and reputation;
–

whether the parody serves expressive purposes or is merely used to exploit the mark commercially.

One author argues that «satirical trade mark parodies» do not constitute trade mark use because they involve neither distinctive use nor a focus on commercial use. Thus, the application of trade mark law to satirical trade mark parodies is called into question altogether (R. Cueni, Schutz von Satire im Rahmen der Meinungsfreiheit, Zürich 2019, 670–674). Most scholars conclude, however, that if the parody is primarily commercially motivated, freedom of expression will generally yield to trade mark protection. Conversely, recognisable parodies used for critical or expressive purposes may receive greater protection.

Sources:

–

Lötscher, 185 ff.
–

E. Marbach, in: R. von Büren/L. David (Hg.), Schweizerisches Immaterialgüter- und Wettbewerbsrecht, Basel 2009, 1524
–

Cueni, 670–674
–

Thouvenin/Dorigo, MSchG 13 N 96 ff.

Doctrine refers to cases illustrating this balancing approach:

–

FSCD 58 II 449 – Ohne Hänkel
–

FSCD 59 II 15 – Wimmernde Preise
–

FSCD 95 II 481 – Club Medityrannis
–

Commercial Court Berne 25.051990 (SMI 1991 p. 234 ss) – Kopulierende Krokodile.
–

Harry Potter/Harry Popper (Kantonsgericht Schwyz, 2010) – Use of a modified famous mark for condoms was considered commercially exploitative and infringing.
|–

Davidoff/Davideath (Civil Court Basel-Stadt, 2010) – A parody of the Davidoff logo used by an anti-smoking organisation was considered permissible in light of freedom of expression.
–

Commercial Court St. Gallen, 2011, HG.2011.10 – Denner, was suscht?

Therefore, Swiss law does not recognise parody or freedom of expression as an explicit statutory or autonomous defence to trade mark infringement. Instead, constitutional rights, especially freedom of expression and freedom of art, influence the interpretation of trade mark law indirectly through a balancing of interests, which may in individual cases limit the scope of trade mark protection.

2) Does your law or case law define or characterise «parody» in the framework of trade mark infringement? YES or NO. Please explain, indicating how «parody» is understood (e.g. must it be humorous, critical, or transformative?) and by whom (legislature, courts, or doctrine).

No. Under Swiss law, neither legislation nor case law provide a uniform legal definition of «parody» in the context of trade mark infringement. The concept is not defined in the TmPA, and Swiss courts have not developed a clear doctrinal definition in trade mark case law. Instead, the understanding of parody is mainly developed in legal doctrine, drawing partly on copyright law and protection of personality rights (Art. 28 Civil Code hereinafter «CC») and comparative European jurisprudence (Source: Lötscher, 11 ff.).

There is no universally accepted definition of parody under Swiss law, because the concept appears in many different forms and may vary depending on the object being parodied, the intention of the author, the degree of dependence on the original work, and the techniques used. Because of this diversity, scholars typically describe parody through characteristic features rather than a strict definition (Source: Lötscher, 27 f.).

However, Swiss legal literature agrees on several core elements of the term «parody» in this context (Source: Lötscher, 29):

First, a parody must refer to an existing work or sign (the «parody template»). A parody is therefore a playful imitation of a pre-existing creation that openly refers to the original rather than concealing the source as in plagiarism. The original must generally remain recognisable, as the parodistic effect depends on the audience recognising the reference (cf. the decision of the German Federal Court of Justice «Gies-Adler»).

Second, parody usually involves transformation or distortion of the original. The original form is imitated but the content is altered, exaggerated, simplified, or distorted. The deviation between the original form and the altered content produces the characteristic parodistic effect (Lötscher, 29).

Third, parody typically aims to create a humorous, satirical, or mocking effect, although doctrine is divided on whether humour is a mandatory element. Some authors argue that comedy is essential, while others consider parody possible even when the effect is not humorous but rather ironic, critical, or sarcastic. Likewise, it is debated whether parody must criticise the original work itself; the prevailing view holds that the original may simply serve as a «springboard» for commentary on other persons, events, or social conditions (Lötscher, 32). A related concept appears in Swiss copyright law. The Swiss Federal Act on Copyright and Related Rights in Art. 11(3) expressly refers to parody, but the provision does not define the concept. Swiss courts have so far provided little guidance on its meaning, and the legislative materials describe parody only broadly as a comic representation of an existing work used for critical purposes (Lötscher, 34 ff.).

Comparative European jurisprudence has also influenced doctrinal discussions. In the Court of Justice of the European Union (CJEU) judgment of 3 September 2014, C-201/13 Deckmyn and Vrijheidsfonds, the Court held that the essential characteristics of parody are that it recalls an existing work while being noticeably different from it and constitutes an expression of humour or mockery. The court also clarified that parody does not require originality, attribution to another author, or direct criticism of the original work. In this case, the heirs of the Belgian comic book author Willebrord Vandersteen and his copyright successors sued a member of the right-wing populist party «Vlaamse Belang» and an association whose purpose was to provide financial and material support to that party and to publish materials. At a New Year’s reception hosted by the city of Ghent, the party member distributed calendars for the year 2011, the cover of which featured a parody of the cover image of a comic book drawn by Vandersteen. The cover of the original comic depicted a floating figure dressed in a white tunic throwing coins at several people, who were trying to catch them. In the parody, the floating figure was replaced by the mayor of Ghent, while the other people were replaced by veiled figures and people of dark skin colour.

In summary: Swiss trade mark law does not define parody. The concept is mainly explained in legal doctrine, drawing on general characteristics such as recognisable imitation, transformation of the original, and a humorous or satirical effect. Swiss copyright law refers to parody in Art. 11(3) Copyright Act without defining it.

3) Do any of the following aspects impact whether a parody of a trade mark may or may not be considered a trade mark infringement (please explain):

a)

The parody constitutes an expression of humour or mockery;

Yes, relevant but not decisive. Humour or mockery is often considered a characteristic element of parody, but it is not strictly required. Swiss doctrine recognises that parody typically involves humorous, ironic, or mocking distortion of an existing sign. However, hu|mour alone does not prevent infringement if the use still harms the trade mark’s functions.

b)

The parody has a critical intent (i.e. the parody is intended to express criticism or commentary, and not merely to entertain or to promote goods or services.);

Yes, Critical commentary or expressive intent weighs in favour of protection under constitutional freedoms such as freedom of expression and artistic freedom in the Federal Constitution of the Swiss Confederation. Swiss doctrine emphasises that courts consider whether the parody contributes to criticism, commentary, or artistic expression rather than merely promoting goods.

c)

The parody is directed at the original mark, and is used to criticize, disparage or discredit the original trade mark, or otherwise affect its reputation;

Yes, can possibly be relevant as a parody may criticise the original mark or its owner, but Swiss doctrine does not require this. The mark may also function merely as a symbolic reference point. However, if the parody directly disparages the mark and harms its reputation, this may strengthen the trade mark owner’s claim, especially for well-known marks (similar in the context of name rights, FSCD 95 II 481 – Club Medityrannis).

d)

The parody is noticeably different from the original trade mark;

Yes, this fact is relevant. A parody should remain recognisable while also displaying clear differences from the original sign. If the altered mark is too similar, the likelihood of confusion increases, which could strongly support a finding of a trade mark infringement. Therefore, if the parody is noticeably different from the original trade mark, a trade mark infringement is less likely according to the Swiss understanding.

e)

The parody is not directed at the original mark (i.e. targeting at society or other aspects unrelated to the original mark);

Yes. Swiss courts have not answered this question so far. Swiss law does not specifically distinguish between parodies directed at the original mark or situations where a trade mark is used for parodies directed to wider social or political discussions. However, if a trade mark is used for a parody that is related to that trade mark, the balancing with the right to free speech becomes more important than in cases when a trade mark is used for a parody that is unrelated to that specific trade mark.

f)

The parody is non-commercial and purely artistic;

Yes, this is an important factor. Swiss trade mark law targets only «use in commerce»; in general, non-commercial uses fall outside the scope of the Swiss TmPA but may become relevant under unfair competition law. Non-commercial artistic uses typically receive stronger protection because they fall within artistic freedom according to the Swiss Federal Constitution and are less likely to interfere with the economic functions of the trade mark. Therefore, if the parody is non-commercial and purely artistic in nature, a trade mark infringement is less likely under Swiss law. However, artistic uses could also be deemed to be «commercial» if the main purpose is commercial rather than artistic.

g)

The parody is non-commercial and used to draw attention to political or social message;

Yes, on the one hand, the Swiss trade mark law targets only «use in commerce»; in general, non-commercial uses fall outside the scope of the Swiss TmPA but may become relevant under unfair competition law and personality rights aspects. Hence, political or social messages may not be included under trade mark laws. In addition, political or social commentary receives particularly strong protection under freedom of expression. Courts therefore tend to be more tolerant of parody used in public debate or activism (especially see Art. 16, 17 et seqq. of the Swiss constitutional rights). However, a trade mark owner may not want to be associated with a specific political or social criticism, in which case the parody may harm the reputation of the trade mark and the personality rights of the trade mark owner (FSCD 95 II 481 – Club Medityrannis).

h)

The parody is used «in the course of trade» and is used to sell competing, similar and/or related goods or services;

Yes, strongly: Using a parody mark to sell competing or related goods directly affects the trade mark’s origin function and may create confusion or unfair exploitation, which is more likely to be seen from the Swiss Courts as a trade mark infringement in the sense of the TmPA and the Unfair Competition Act (UCA) (Commercial Court St. Gallen, 2011, HG.2011.10 – Denner, was suscht?).

i)

The parody is used «in the course of trade» and is used to sell non-competing and unrelated goods or services;

Yes, even if the goods are unrelated, the use may constitute dilution or exploitation of the reputation of a famous mark under Art. 15 TmPA.

j)

The parody involves monetisation (e.g. sales or advertising revenue);

Yes, this is relevant: Commercial monetisation (sales, advertising revenue, merchandising) weakens reliance on expressive freedoms (constitutional rights in general), because the use becomes primarily economic.

k)

The trade mark being parodied is considered to be well-known or famous;

Yes, this is important: Famous marks receive broader protection under Swiss trade mark law, including protection against dilution and reputational harm. Parodies of famous marks therefore face stricter scrutiny.

l)
Other.

Courts may also consider, among others:
- –
  
  the purpose of the parody (criticism, entertainment, commercial exploitation);
- –
  
  the recognisability of the parody;
- –
  
  the impact on the mark’s origin function, distinctiveness, and reputation;
- |–
  
  whether the parody is merely a device to exploit the trade mark’s attraction to sell a product.

These elements form part of a broader balancing between trade mark protection and constitutional freedoms.

4) Does the function in which the trade mark is used have an impact on liability – in particular, does liability depend on whether such use constitutes use in the function of indicating the origin of goods or services? YES/NO. Please explain.

Yes, the function of a trade mark has a significant impact on liability, in particular on whether and to what extent the origin function of a trade mark has been infringed.

The trade mark owner may only assert their exclusive right under trade mark law if the protected sign is used as a trade mark (Marbach, 1462). A sign is considered to be used as a trade mark, if, in view of the relevant public, the sign serves to identify and distinguish the goods and services of one company from those of other companies and thus serves as an indication of origin of a company or enterprise (Thouvenin/Dorigo, MSchG 13 N 14). Such use of the earlier trade mark infringes the distinctive and origin-indicating functions of the prior mark, thereby giving rise to a likelihood of confusion or, in case of a famous mark, also exploiting or damaging its reputation (Marbach, 163, 173).

The distinctive and origin-indicating functions of the prior mark are typically not affected in cases of: (i) informative use, which includes use of a trade mark in editorial texts or reference works, necessary use of a trade mark to describe a third party’s own goods/services, and use of trade mark elements that belong to the public domain; (ii) decorative use; or (iii) trade mark use in Metatags and Keyword Advertising. In this context, parodies may also be tolerated (M. Isler, in: L. David/M. Frick, Basler Kommentar zum Markenschutzgesetz, Wappenschutzgesetz, Basel 2017, MSchG 13 N 14; Thouvenin/Dorigo, MSchG 13 N 34 ff.).

Regardless of the question whether or not a sign is being used as a trade mark and possibly excluding the assertion of trade mark rights, claims for unfair competition may arise according to the UCA in the event of the use of confusingly similar or misleading signs or in the event of exploiting the reputation of a trade mark or otherwise disparaging actions (Art. 2 and Art. 3 para. 1 lit. a, d and e UCA).

5) Is the parodic nature of the use, including the specific type of parody (e.g. commercial, artistic, political or satirical), taken into account as a relevant factor in the assessment of the likelihood of confusion? YES/NO. Please explain.

Yes, the parodic nature of a sign is a relevant factor when assessing the likelihood of confusion. The assertion of exclusive rights by the trade mark owner generally requires that a third-party sign is being used as a trade mark resulting in a likelihood of confusion (Art. 13 para. 2 and Art. 3 para. 1 of the TmPA).

If, however, a third-party sign is being used as a parody, trade mark use of such sign may be excluded. In particular, trade mark parodies involve mocking, usually humorous uses of a well-known or even famous trade mark. Accordingly, the parody is usually clearly distinguishable from the underlying trade mark, so that the origin and distinctive functions of that mark are not infringed, given that the protected sign is not used in the parody in such a way that the relevant public might perceive it as an indication of origin. Consequently, the trade mark parody is not used as a trade mark and a likelihood of confusion cannot be established (Thouvenin/Dorigo, MSchG 13 N 127 f.).

Moreover, given that the justification for parody is derived from the right to freedom of expression and artistic freedom, artistic, political or satirical trade mark references need to be taken into account when assessing the parodic nature of use. Parodies, however, that serve exclusively commercial purposes do not merit protection, and the trade mark owner may thus assert their exclusive right under trade mark law. In particular, with respect to famous marks, Swiss courts have found that the commercial use of a parody constitutes not only trade mark infringement, based on a likelihood of confusion, but also constitutes trade mark infringement and unfair competition through the exploitation of reputation (Cantonal Court Schwyz, August 17, 2010, ZK 2008 19,; Harry Popper; Cantonal Court Vaud, July 15, 2009, CM09.011076, E. IV b, E. IV cb, Red Bull/Red Swiss).

6) Does your law or case law address conflicts between parody and the protection of well-known, reputed or famous trade marks? YES/NO. Please explain in particular, does your jurisdiction recognize a statutory fair-use exemption, apply a «due cause» balancing test, or afford stricter protection to reputation?

There is no statutory basis for trade mark parody or any other statute recognising a fair use exemption under Swiss law. Trade mark parody directly derives from the right to freedom of expression and artistic freedom (Art. 16 and Art. 21 of the Federal Constitution of the Swiss Confederation). Swiss case law, however, addresses conflicts between parody and the protection in particular of well-known and famous trade marks, which is broader than the protection of other trade marks.

Swiss law distinguishes between a well-known mark and a famous mark. Well-known marks are those that have become established through extensive use in the Swiss market and are well known within the relevant public.

Famous marks, on the other hand, are marks with extremely high recognition that extend far beyond their actual market circles. Accordingly, protection of a famous mark extends further, as claims for exclusive |rights under trade mark law may be asserted even where there is no likelihood of confusion due to the third-party sign not being used as a trade mark, as the famous mark is also infringed where its reputation is exploited or damaged (Art. 15 para. 1 TmPA).

Whether or not a third-party sign is considered a parody of a well-known or famous mark needs be determined on a case-by-case basis. Determinations must consider: (i) whether the parody is recognised and understood as such; (ii) whether the parody offers a satirical, artistic and politically critical or entertaining engagement with a third party’s well-known or famous mark; and (iii) whether the parody serves a possible commercial purpose that may or may not be the primary purpose of the parody, whereby a parody of a famous mark, according to Swiss case law, is considered as a commercial use, thus indicating trade mark infringement.

Parodies of well-known and famous marks may also constitute use of confusingly similar signs as well as the exploitation of the reputation of a trade mark and an otherwise disparaging action under unfair competition law (Art. 2 and Art. 3 para. 1 lit. a, d and e UCA).

7) Does your law or case law allow a trade mark parody to be registered as a trade mark? YES/NO Please explain, also addressing how local practice deals with such applications.

Yes. Swiss statutory law does not differentiate between the registration of a «regular» trade mark and a parody of a trade mark. As such, the same laws and regulations generally apply. However, consideration must be given to the nature of trade mark parodies:

i.

Distinctiveness: A trade mark is a sign capable of distinguishing the goods or services of one undertaking from those of other undertakings (Art. 1(1) TmPA). Trade mark parodies may only be understood to be a humorous or critical reference to a trade mark and not as a sign meant to distinguish the commercial origin of goods and services.
ii.

Contrary to public policy: Excluded from trade mark protection are, in particular, signs contrary to public policy, morality or applicable law (Art. 2(d) TmPA). Trade mark parodies may contain profane, expletive or otherwise objectionable elements and, as such, may be excluded from registration.
iii.

Likelihood of confusion: Signs that are similar to an earlier trade mark and are intended for the same or similar goods or services such that a likelihood of confusion results are excluded from trade mark protection (Art. 3(1)(a) TmPA). Trade mark parodies must be sufficiently distinct from the original trade mark, and the public must not be confused or misled as to the origin of the goods or services bearing the trade mark parody.
iv.

Well-known and famous trade mark: A trade mark that is well known within the meaning of Art. 6bis of the Paris Convention, is considered an earlier trade mark (Art. 3(2)(b) TmPA). Furthermore, the use of a trade mark may be prohibited for any type of goods or services if such use threatens the distinctiveness of a famous trade mark or exploits or damages its reputation (Art. 15(1) TmPA). As trade mark parodies may predominantly target well-known and famous trade marks, the registration of such parodies may be prevented, even if the original trade mark has not been registered in Switzerland or is used for entirely different goods or services.

The Swiss Federal Institute of Intellectual Property (IPI), which is responsible for registering trade marks in Switzerland, examines applications with regard to formal requirements and absolute grounds for refusal, including lack of distinctiveness or signs contrary to public policy. The IPI does not examine relative grounds for refusal, such as conflict with an earlier trade mark. Instead, these issues are resolved through opposition proceedings (except that the broader protection awarded by Art. 15 TmPA cannot be invoked in opposition proceedings) or court actions brought by the owner of the earlier mark. Consequently, a trade mark parody may technically be registered if it meets the absolute requirements for protection under the TmPA. However, registration does not guarantee validity, which may be challenged by the owner of the earlier trade mark.

II. Policy considerations and proposals for improvements of your Group’s current law

8) Could your Group’s current law or practice relating to parody defences to trade mark infringement be improved? YES/NO. Please explain.

No. Swiss trade mark law already allows parodistic uses that are either non-commercial or not used as a trade mark. The law also awards broader protection to famous trade marks. Part of the Swiss group would nonetheless be in favour of amending Art. 15 TmPA to specifically address parodic use of famous trade marks.

9) In your Group’s view, what policy objective (such as free speech, or another objective) would a defence of parody promote and help accomplish? Does the policy objective drive the types of expression that should be allowed under a parody defence? YES/NO. Please explain.

Yes. In the view of the Swiss Group, free speech and freedom of artistic expression appear to be the most imminent policy objectives with respect to parodic uses.

10) Are there any police considerations and/or proposals for improvement to your Group’s current law falling within the scope of this Study Question? YES/NO. Please explain.

No.

|III.Proposals for harmonisation

11) Do you believe that there should be harmonisation in relation to exceptions and defences to trade mark infringement based on parody? YES/NO. Please explain.

If YES, please respond to the following questions without regard to your Group’s current law or practice.

Even if NO, please address the following questions to the extent your Group considers your Group’s current law or practice could be improved.

No. While legal certainty on an international scale is important, parody raises fundamental questions concerning free speech, artistic expression and commercial interests, which vary across jurisdictions. In addition, trade mark laws, including the relevant trade mark functions, and legal standards such as the concept of «well-known» or «famous» trade marks are not fully harmonised across jurisdictions. As such, it may be difficult to harmonise the rules governing parody exceptions or parody limitations to trade marks. Nevertheless, providing general guidelines regarding the interests and considerations likely to be involved in the legislation of parody may be helpful.

12) Should different standards apply when assessing whether a parody infringes a trade mark, depending on the nature of the parody (e.g. commercial use, artistic expression, brand criticism, or political parody)? YES/NO. Please explain.

Yes. In particular, commercial and disparaging uses should be differentiated from other uses. The central purpose of a trade mark is its use in commerce and infringements that affect its commercial use (such as creating confusion between goods and services or devaluation of the brand) ought to be relevant.

13) Should there exist exceptions or limitations to trade mark protection for the purpose of parody or freedom of expression? YES/NO. Please explain.

Yes. Freedom of expression and not commercially motivated parody should, in principle, be permitted, even when targeting trade marks. However, an adequate balance between the relevant private and public interests must be found.

14) Should any of the following aspects impact whether a parody defence for trade mark infringement should be available (please explain):

a)

The parody constitutes an expression of humour or mockery;

Yes. Parody should include humour or mockery to be considered as such. However, this cannot be the only criterion for the admissibility of a parody.

b)

The parody has a critical intent;

Yes. This can also be an important element of parody, amongst others.

c)

The parody is noticeably different from the original trade mark;

Yes, the parody must be sufficiently different from the original trade mark to avoid confusion, but it must be close enough to be recognised as parodying the original trade mark.

d)

The parody is not directed at the original mark (i.e. targeting at society or other aspects unrelated to the original mark);

Yes. Using a trade mark to target unrelated entities or aspects (e.g., society in general) raises the question of whether the relevant public’s interests outweigh the conflicting interests of the trade mark owner, including its wish not to be associated with such unrelated entities or aspects. In other words, is the use of the trade mark necessary and appropriate or could the same objective be achieved by other, more appropriate means?

e)

The parody is non-commercial and purely artistic;

Yes. Artistic freedom should be protected, but balancing of relevant interests should still be required.

f)

The parody is non-commercial and used to draw attention to political or social message;

Yes. Freedom of speech should be protected, but balancing of relevant interests should still be required (e.g., to protect the trade mark owner or the trade mark itself from unnecessary damage).

g)

The parody is directed at the original mark, and is used to criticize, disparage or discredit the original trade mark, or otherwise affect its reputation;

Yes. See (d) and (f) above. However, there must be a distinction between criticism, which may have to be tolerated, and disparaging and discrediting a trade mark, which cannot be justified with exceptions and limitations to trade mark law.

h)

The parody is used «in the course of trade» and is used to sell competing, similar and/or related goods or services;

Yes. It should not be permissible to sell the same or similar goods or services under the guise of parody (i.e., by using parody as an unfounded pretext).

i)

The parody is used «in the course of trade» and is used to sell non-competing and unrelated goods or services;

Yes. Specifically, if the reputation of a trade mark is exploited or damaged, particularly in the case of famous trade marks.

j)

The parody involves monetisation (e.g., sales or advertising revenue)

Yes. See (h) and (i) above. In such cases, parody is less likely to be protected by freedom of speech or artistic expression.

k)

The trade mark being parodied is considered to be well-known or famous;

No. Whether or not parody is available as a defence should not depend on whether the original trade mark is well-known or famous. Parody primarily targets well-known or famous trade marks and, as such, should be available as a defence in such cases as well. However, see (i) above.

l)

Other. Please explain.

No.

15) Should the function in which the trade mark is used have an impact on liability – in particular, should liability |depend on whether such use constitutes use in the function of indicating the origin of goods or services? YES/NO. Please explain.

Yes. A trade mark should primarily be used to protect commercial interests (e.g., to distinguish the goods and services of one company from those of another). Other relevant functions (e.g., the goodwill and reputation of the brand) may also be taken into account, as is the case in certain jurisdictions.

16) Should the availability of a parody defence be subject to the demonstration of the following (please explain):

a)

Absence of likelihood of confusion or association as to source, affiliation, sponsorship?

Yes. A parodic use should not cause likelihood of confusion, as it otherwise cannot fulfil its purpose of being recognised as a parody.

b)

That the parody does not take unfair advantage of, or cause undue detriment to, the reputation or distinctiveness of the mark?

Yes. See 14(i) and 15 above.

c)

That use of the parody is consistent with honest commercial practices?

Yes. Which, however, does not exclude fair criticism or mockery.

17) Should well-known, reputed or famous trade marks benefit from additional protection against trade mark parody? YES/NO. Please explain.

No. See 14(k) above. Well-known, reputed or famous trade marks are most likely to be the subject of parody and, as such, parody should be available as a defence particularly in such cases.

18) What approach best balances parody and freedom of expression with the protection of well-known, reputed or famous trade marks, should the law provide for:

a)

a statutory fair-use exemption, under which parody would not constitute trade mark infringement if specific legal conditions are met;
b)

a «due cause» balancing test, under which parody could justify the use of a trade mark on a case-by-case basis, following a judicial assessment; or
c)

stricter protection of trade mark reputation in cases involving parody?

B. A fair balance always requires a case-by-case analysis that considers commercial, political, satirical, and critical or social aspects.

19) Should a sign which parodies a third-party’s trade mark be allowed to be registered as a trade mark? YES/NO. Please explain, also addressing how TM Offices should deal with the situation.

Yes. Parody should not be a specific criterion for registration of a trade mark. A parody may be excluded for other reasons of public interest (e.g., unlawful or immoral signs). The owner of the original trade mark may oppose the registration, if its interests are sufficiently affected.

20) Please comment on any additional issues concerning exceptions and limitations to trade mark protection related to parody you consider relevant to this Study Question.

None.

21) Please indicate which industry sector views provided by in-house counsels are included in your Group’s answers to Part III.

None. No in-house counsel is included in the Study Group.

|Zusammenfassung

Der Bericht der Schweizer Gruppe untersucht, inwiefern Parodie und Meinungsfreiheit als Verteidigung gegen Markenrechtsverletzungen dienen können. Er zeigt auf, dass Marken heute nicht mehr nur kommerzielle Herkunftshinweise sind, sondern zugleich kulturelle und gesellschaftliche Symbole, die in Humor, politischer Kritik, Kunst und digitaler Kommunikation verwendet werden. Daraus entsteht ein Spannungsverhältnis zwischen dem Schutz von Marken und der Gewährleistung der Meinungsfreiheit.

Der Bericht gelangt zum Schluss, dass das schweizerische Recht keine ausdrückliche gesetzliche Parodieausnahme kennt. Verfassungsmässige Rechte wie die Meinungsäusserungsfreiheit und die Kunstfreiheit beeinflussen das Markenrecht jedoch mittelbar durch die richterliche Interessenabwägung. Die schweizerische Rechtsprechung unterscheidet dabei zwischen kommerziellen und nicht kommerziellen Parodien: Künstlerische, politische und kritische Verwendungen werden eher toleriert, während kommerziell motivierte Parodien, insbesondere solche, die bekannte Marken ausnutzen, eine Markenrechtsverletzung darstellen können.

Die Haftung wegen Markenrechtsverletzung hängt zudem davon ab, ob die Parodie als Hinweis auf die betriebliche Herkunft von Waren oder Dienstleistungen wahrgenommen wird. Rein expressive oder satirische Nutzungen begründen daher weniger wahrscheinlich eine Verwechslungsgefahr zwischen den betroffenen Marken.

Die Schweizer Gruppe vertritt die Auffassung, dass Parodien grundsätzlich zulässig bleiben sollten, sofern sie mit künstlerischem Ausdruck, politischer Debatte oder Kritik verbunden sind und weder eine unlautere kommerzielle Ausnutzung, eine Verwechslungsgefahr für Konsumentinnen und Konsumenten noch eine Herabsetzung des Markeninhabers bewirken.

Résumé

Le rapport du Groupe suisse examine dans quelle mesure la parodie et la liberté d’expression peuvent constituer un moyen de défense contre les atteintes au droit des marques. Il souligne que les marques ne sont aujourd’hui plus seulement des signes distinctifs commerciaux, mais également des symboles culturels et sociaux utilisés dans l’humour, la critique politique, l’art et la communication numérique. Cette évolution crée une tension entre la protection des marques et la garantie de la liberté d’expression.

Le rapport conclut que le droit suisse ne reconnaît pas la parodie comme une exception légale explicite. Toutefois, des droits constitutionnels tels que la liberté d’expression et la liberté artistique influencent indirectement le droit des marques à travers la mise en balance des intérêts opérée par les tribunaux. La jurisprudence suisse distingue à cet égard les parodies commerciales des parodies non commerciales: les usages artistiques, politiques et critiques sont davantage susceptibles d’être tolérés, tandis que les parodies à but commercial, en particulier celles exploitant des marques renommées, peuvent constituer une atteinte au droit des marques.

La responsabilité en matière d’atteinte au droit des marques dépend également de la question de savoir si la parodie est perçue comme indiquant l’origine commerciale des produits ou des services. Les usages purement expressifs ou satiriques sont ainsi moins susceptibles de créer un risque de confusion entre les marques concernées.

Le Groupe suisse estime que la parodie devrait en principe demeurer admissible lorsqu’elle est liée à l’expression artistique, au débat politique ou à la critique, pour autant qu’elle n’entraîne ni exploitation commerciale déloyale ni risque de confusion pour les consommateurs ou le dénigrement du titulaire de la marque.

Summary

The report of the Swiss Group examines whether parody and freedom of expression may constitute a defence to trade mark infringement. Today, trade marks function not only as commercial identifiers, but also as cultural and social symbols that are frequently used in humour, political criticism, art, and digital communication. This development creates an inherent tension between the protection of trade marks and the safeguarding of freedom of expression.

This report concludes that Swiss law does not recognise parody as an explicit statutory defence. Nevertheless, constitutional rights, particularly freedom of expression and artistic freedom, indirectly shape trade mark law through the courts’ balancing of competing interests. Swiss courts distinguish between commercial and non-commercial parody: artistic, political, and critical uses are generally more likely to be tolerated, whereas commercially motivated parodies, especially those exploiting well-known marks, may amount to infringement.

Liability for trade mark infringement also depends on whether the parody is perceived as indicating the commercial origin of goods or services. Purely expressive or satirical uses are therefore less likely to create confusion between different trade marks.
The Swiss Group takes the view that parody should generally remain permissible where it is connected to artistic expression, political debate, or criticism, provided that it does not involve unfair commercial exploitation, create a likelihood of consumer confusion or result in disparagement of the trade mark holder.