“Cambiaste un Ferrari por un Twingo
Cambiaste un Rolex por un Casio”
These are the verses of the new single of the famous Colombian singer which, in only 5 days, have reached hundreds of thousands of views all over the world. The song is a clear attack to the ex-partner Gerard Piqué – who has changed a Ferrari with a Twingo – shared following the separation between the two and of the officialization of his new relationship with the young model Clara Chia Marti.
Right after the debut of the single, between the two exes started an intense media back-and-forth, in which took part even the owners of the trademarks mentioned by Shakira, and, at last, the EUIPO.
Shakira and Piquè public dissing aside, these verses mention four famous trademarks, two of which (“Twingo” and “Casio”) are used by the singer as negative term of comparison, with an indirect derogative function and, apparently, without any previous agreement with the trademarks’ owners.
But is a similar use of well-known trademarks always free and legitimate?
Art. 9 of the 2015/2424 EUTMR, as well as the industrial property code in force, states that the owner of a trademark has the right to forbid others its use if “the use without a fair reason of the sign allows to gain indebt advantage from the distinctive character or from the notoriety of the EU trademark or prejudices others”. Nevertheless, besides the exclusive rights recognized to the trademark owner, the fundamental right of the freedom of speech does exist and, in specific circumstances, prevails on the firsts.
On this regard, even the Directive (EU) 2015/2436 on trademarks recognizes that the “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 the honest practices concerning industrial and commercial matters.” (Considerando n.27).
Therefore, to evaluate if the non-authorized use of a trademark in artistic context infringes the trademark rights of the owner, one should delicately balance the rights in question by verifying if the main purpose for the use of the sign is indeed expressing oneself artistically (even through criticism and irony) and, in this case, if such purpose unfairly damages the brand image. In other words, an attentive evaluation case by case must be carried out.
This is certainly not the first time that a song mentions well-known trademarks: just think about “Rolls Royce” of Achille Lauro, or the use of the Deutsche Grammophon GmbH’s trademarks on the cover of the album “Gattini” of Elio e le Storie Tese. In this last example, the Court of Milan stated that the use of the trademark by the group of Milan was auto-ironic and that, even if the move gave the group an economical advantage, in the case in question the main goal of the (unauthorized) use of the trademark was of parodistic nature and not to economically exploit their notoriety.
On this matter, the American leading case is represented by the decision Mattel, Inc v MCA Records, Inc, related to the use of the trademark “Barbie” in the song “Barbie Girl” of the group Aqua. Even in this case, the judges had considered that the reference to Barbie was ironic and, therefore, licit in light of the freedom of expression.
Different is the case of the work “Simple living” (2008) by Nadia Plesner. The artist used Louis Vuitton’s trademark in one of her paintings to denounce the poverty situation in Darfur. It represented a baby in a severe case of malnourishment wearing a Louis Vuitton bag. With a decision then overturned in 2011 by Aja Court, the judges considered that the reproduction of the design of Louis Vuitton by the artist made her gain an indebt commercial advantage to the detriment of the owner company, whose image was undoubtedly linked to the genocide in Darfur.
To summarize: even if the artistic expression, intended as a declination of the freedom of expression, generally prevails on the trademark right, the use of the trademark in artistic context shall not damage the image of the trademark or be mainly aimed at economically exploiting its reputation.
Therefore, could the use of the trademark “Casio” e “Twingo” by Shakira be contested by the two owners or would the right of expression of the singer prevail?
For now, neither of the two companies seem intentioned to act against Shakira. On the contrary, both have leveraged the unexpected media resonance obtained thanks to the single through targeted marketing campaigns. It cannot be excluded with certainty however that the two companies could demonstrate to have suffered an image damage.
On this episode, even EUIPO, with an ironic tweet, raised awareness on the importance of the registration.
“Changing a Rolex for a Casio 
?
Whatever you do, make sure it is a registered trade mark or design. Authentic goes a long way”.
Ilaria Feriti