ABSOLUT CLARITY

The Trademark Blog is unhappy with the IPKat’s coverage of Absolut vodka’s involvement with Sex in the City by way of the fictional ABSOLUT HUNK campaign (see the IPKat’s 6 August ABSOLUT CHEEK post). Marty suspects that the IPKat was being ironic but that’s not the case. Certainly there’s a degree of light-heartedness there and this wasn’t one of our most substantively legal blogs. However, there was a serious point behind it – if a trade mark owner indulges in advertising of a salacious nature, can he complain when third parties use his mark in a similar context?

Marty says “The Absolut Hunk campaign is fictional, and thus the use is tarnishing only if you miss the joke”. Not so. While Sex in the City is obviously fictional and the actual posters did not appear widely (although one did appear at a New York bus stop, presumably for filming purposes), the use took place with Absolut’s full cooperation and the image used was shot by the photographer used in the “real” Absolut campaigns. Furthermore, Absolut later capitalised on the success of the image by distributing cards containing the recipe for the “Absolut Hunk” cocktail featured in the show. The whole episode allowed Absolut to get the best of both worlds and to reap the marketing advantage of a campaign that was by the admission of its vice-president of marketing “a bit salacious” and thus inconsistent with the campaign that Absolut runs in the “real world”.

Marty goes on to say that being featured in Sex in the City can’t be tarnishing because Sex in the City is mainstream and can’t be considered to be hardcore pornography. This misses the point though. The argument was never that being featured in Sex in the City was (self-)tarnishing. Instead, it was that being associated with a publicity campaign featuring an obviously naked man could be, regardless of where that campaign appears. A rule of thumb for when the trade mark owner has used his mark in a way that prevents him from bringing at least some tarnishment claims against others ought to be, would the trade mark owner cry tarnishment if a third party used its trade mark in the way that it has? Here I think there’d be a good chance that Absolut would. From a European perspective, under Article 5(2) of the Trade Mark Directive, the closest we get to tarnishment is the idea of detriment to repute of the trade mark. How can a trade mark owner claim that a defendant has damaged his reputation if the trade mark owner has already associated the reputation of his mark with overt sexual imagery? Here, certainly the positioning of the vodka bottle leaves a little to the imagination but the direction that the mind is meant to go in is quite clear from the rest of the image.