Challenge to protect trade mark
Proprietor must satisfy a court that any action to which it objects has caused real harm to their reputation
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.