Colombian singer Shakira appeared on the lips of the show-business world yesterday. During a performance at the Bzrp Music Sessions, the artist sang: “You traded a Ferrari for a Twingo, you traded a Rolex for a Casio”. From the context in which the song was performed, it is clear that Shakira wanted to clearly emphasize the luxury and superiority of one brand over another. Is it permissible to include third-party trademarks in songs, and can we consider such an action to be an infringement of the renown of such trademarks?
As a general rule, the name of the brand and products can be used in the lyrics of a song, even if they are registered trademarks. In most cases, this does not interfere with trademark protection rights, since such action does not constitute a functional use. All the trademark functions are related to their commercial use – they are intended to associate the sign with a particular entrepreneur, guarantee the quality or advertise goods and services. Thus, in situations where the mark appears for non-commercial artistic purposes, the consent of the trademark holder is not required. However, such use has its limits – it must not adversely affect the renown of the trademark used.
We equate the renown of a trademark with the positive perception of a particular brand or product that is formed in the public. So, acting to the detriment of renown means acting to the detriment of the qualitative associations connected with the trademark holder. The direct use of the label towards goods that represent lower quality or an inferior, less luxurious category, or even the mere reproduction of the trademark in a degrading context is contradictory to the company’s philosophy.
Nevertheless, Shakira can breathe a sigh of relief. To establish trademark infringement, one needs not only the creation of a negative association on the part of the public but also the functional commercial use of the trademarks. For example, such a situation would be the case when marking one’s own goods and services and creating a negative conviction between the trademarks on the part of the public. The case may be different in terms of potential damage to the renown of trademark holders, even if – according to some, the singer refers to her relationship with a former partner. In this case, potential claims for infringement of manufacturers’ or brands’ renown, which are depreciated by the artist cannot be excluded.