After much trying, Jack Daniel’s will finally get a SCOTUS review on the polemic decision by the United States Court of Appeals for the Ninth Circuit (9th Cir.) on VIP Prods. LLC v. Jack Daniel’s Properties, Inc. in which the Court made an overreaching interpretation of the Rogers test by extending it to trademarks and granting it First Amendment protection.

The decision, which raised some alarms in the trademark community, may be considered to engender some chaos by eroding the line that separates likelihood of confusion from free speech and opens a door for “parody” trademarks to free-ride on other well known distinctive signs.

In Colombia, Decision 486/2000 (§157) states that:

Third parties may, without the consent of the owner of the registered trademark, use in the market their own name, address or pseudonym, a geographical name or any other certain indication related to the species, quality, quantity, destination, value, place of origin or time of production of its products or of the provision of its services or other characteristics of these; as long as it is done in good faith, does not constitute use as a trademark, and such use is limited to identification or information purposes and is not capable of misleading the public about the origin of the products or services.

Which means that Colombian law does not make any distinction as to whether the brand is being used for parody purposes or not. In that order, the rules for the assessment of a risk of confusion would be in force considering that the purpose of use of a trademark will always be the commercialization of products or services covered by it.

Recent modification of Law 23/1982 through Law 1915/2018 (§16.d) provides the following:

The transformation of published literary and artistic works will be allowed, provided that it is carried out for parody and caricature purposes, and does not imply a risk of confusion with the original work.

Therefore, parody is circumscribed to copyright in such way that it could not be aplicable to trademarks.

Illustration by Jonathan Hurtarte/Bloomberg Law