Chal­lenge to pro­tect trade mark

Pro­pri­etor must sat­isfy a court that any ac­tion to which it ob­jects has caused real harm to their rep­u­ta­tion

Business Day - Business Law and Tax Review - - BUSINESS LAW & TAX REVIEW - CHARLES WEB­STER

IFOL­LOWED with in­ter­est the brouhaha about the with­drawal of the misog­y­nist T-shirts that were be­ing sold by a prom­i­nent cloth­ing store. Hav­ing heard the cov­er­age on Ra­dio 702 and read an ar­ti­cle in the press, which in­cluded ex­am­ples of the ob­jec­tion­able T-shirts, the ques­tion which must be asked is: how much harm did the mat­ter cause the store over and above the loss of rev­enue suf­fered as a re­sult of the pre­sum­able destruc­tion of the T-shirts? The point is that they were forced to re­move the Tshirts as a re­sult of com­plaints made by var­i­ous bod­ies. The bod­ies in ques­tion made it clear that they found the Tshirts of­fen­sive. Whether or not they were of­fen­sive is not the point, but from a mar­ket­ing per­spec­tive what was im­por­tant was that the store re­alised that there were a suf­fi­cient num­ber of peo­ple and as­so­ci­a­tions who were of­fended by the T-shirts that the store ran the risk of a form of con­sumer boy­cott. By boy­cott I don’t nec­es­sar­ily mean an or­ches­trated cam­paign but merely a con­scious decision made by a num­ber of peo­ple never to shop at the store again.

Rep­utable com­pa­nies spend a for­tune on brands and brand­ing and cre­at­ing their cor­po­rate im­age, and one mis­take can do ir­repara­ble harm to such cor­po­rate im­age. In trade mark terms such con­duct would be detri­men­tal to the dis­tinc­tive char­ac­ter or re­pute of the trade mark in ques­tion.

On the global stage the best ex­am­ple in re­cent times of the self­de­struc­tion of a global brand was the Tiger Woods de­ba­cle. While Woods, the golfer, has plum­meted from what was per­ceived as an unas­sail­able num­ber one spot in the golf rank­ings, Woods, the brand, has also plum­meted in value. Iron­i­cally all as a re­sult of a golf swing, not on the course but rather by an en­raged wife smash­ing his SUV on learn­ing of his phi­lan­der­ing. As each new cock­tail wait­ress or other li­ai­son re­vealed her­self, so did the ma­jor spon­sors quickly and de­ci­sively dis­as­so­ci­ate them­selves from Tiger Woods, both the brand and the man.

An­other ex­am­ple of a global brand that suf­fered enor­mous rep­u­ta­tional harm in re­cent times was BP as a re­sult of the Gulf oil spill, per­haps not that much of an is­sue to South Africans as it didn’t dirty our shores.

Last year Qan­tas did a hatchet job on its own rep­u­ta­tion by ground­ing its en­tire fleet. While the air­line ex­plained the com­mer­cial ne­ces­sity to do so as a re­sult of strike ac­tion, thou­sands of stranded pas­sen­gers may think again be­fore book­ing on the air­line.

What these ex­am­ples il­lus­trate is that a brand or trade mark has an enor­mous value that goes be­yond the nar­row le­gal def­i­ni­tion of a trade mark, which is a mark to dis­tin­guish one party’s goods from an­other or, say­ing

The lead­ing case in SA on this is­sue re­lated to T-shirts. In that case T-shirts dis­torted the well known Black La­bel beer mark and slo­gan by us­ing the same colours and gen­eral font used on Black La­bel beer but chang­ing the trade mark Black La­bel to Black Labour and the slo­gan Africa’s lusty, lively beer to Africa’s lusty, lively ex­ploita­tion since 1652. Sabmiller ar­gued that the T-shirts were racially of­fen­sive and even sug­gested that they con­sti­tuted hate speech The dis­pute went all the way to the Con­sti­tu­tional Court and the court found that SABMiller had failed to prove a like­li­hood of eco­nomic harm to it as a re­sult of the sale of the T-shirts.

This now takes us back to the sex­u­ally of­fen­sive T-shirts re­ferred to above. In this case the party re­spon­si­ble for the T-shirts re­alised the like­li­hood of eco­nomic harm that the sale of its own T-shirts might cause and vol­un­tar­ily with­drew the T-shirts. The ques­tion which must now be asked is, what if the same of­fen­sive mat­ter ap­peared on those T-shirts but to­gether with a well-known trade mark such as Black La­bel and were sold in flea mar­kets? The same mes­sage, the same po­ten­tial harm, but the hur­dle which the pro­pri­etor of the well known trade mark needs to over­come is to sat­isfy a court that the sale of the T-shirt will cause its brand harm. That is the chal­lenge faced by pro­pri­etors of well known trade marks who try to pro­tect their marks from harm by third par­ties.

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