Offensive Trade Marks
It is apparent that the judgement of the Constitutional Court in the Laugh-it-off case might have raised more questions than it has answered.
Recent news events have placed the spotlight on the use of religious figures in cartoons, and the relevance of freedom of speech. This issue can also feature in the context of trade mark law. The treatment of religious symbols may differ from country to country. For instance, Jesus for jeans is registered, amongst others, in the Netherlands, France, Italy and Spain. A different approach was followed in a recent decision in the United Kingdom, where application was also made for registration of the word Jesus. A provision of British trade mark legislation that enacts that a trade mark shall not be registered if it is contrary to public policy or to accepted principles of morality, was at issue. Regard was had to a code of advertising practice which advised that particular care should be taken in relation to advertising which uses religious symbols and icons.
The document stated that there is a particular need to take care where the central tenets or most sacred symbols and icons of a particular faith are being used. It was held that Jesus is the ultimate Christian name and commands the highest degree of reverence and respect amongst committed Christians. It was indicated that a common response to seeing Jesus being used for general commercial use as a trade mark would be a mixture of anger and despair according to temperament. The same approach should of course be followed in relation to other religions, but there are instances where a particular symbol has been in use for a long period of time, and registration is unlikely to be refused in such an instance.
With regard to South Africa, the position is that we have a similar provision to that contained in British Legislation. This provision is to the effect that a mark cannot be registered, amongst others, if it is likely to give offence to any class of persons. What is the norm? It was held in a decision dealing with the Hallelujah trade mark in the United Kingdom, which was refused, that the Registrar must not act as a sensor or arbiter of morals, and also not as a trendsetter. He must not lag so far behind the climate of the time that he will be out of touch with reality, but he must at the same time not be so insensitive to public opinion that he accepts or registers a mark which so many people would consider offensive. This could tie in with the judgment of the Constitutional Court in the Laugh-it-off case, where it was said that the mere fact that the expressive act concerned may stir discomfort in some, and appear to be morally reprobate or unsavoury to others, would not cause the expression to fall outside of the protection of the Constitution.
The Constitutional Court, in the SAB case, indicated that a new approach should be followed in relation to trade mark law. It was held that the use of a famous trade mark would, in general, be allowed if it is used in the context of parody, on condition that it does not cause substantial economic detriment to the proprietor of the mark. In that case it was of course found that a parody which suggests racial prejudice is in fact protected through the Constitution’s guarantee of freedom of speech. It now appears that entrepreneurs are taking the Constitutional Court’s judgement and are trying to utilise it in testing the limits of free speech. Recent filings of trade marks in the Registrar of Trade Marks’ Office is an indication of this trend. The following examples, which are translated from Afrikaans, can be used. The first one involves the use of the well-known Diesel trade mark, along with the sentence “Diesel is expensive, spare your bakkie, ride a farmer”. The second example involves the use of the well-known Toyota mark in the following sentence “Toyota, this bakkie does not take s…”. The third example is the use of the SABC3 test pattern along with the following sentence “F….o… it’s bed time”. Is it possible to defend these cases on the basis of the Constitution? When regard is had to overseas decisions of a similar nature, the position is not as conservative in England, for example, as one would think. In terms of that country’s legislation there is a prohibition on the registration of marks which are contrary to public policy or accepted principles of morality. Despite this, trade marks that have been registered include Raatz Pizs, Bonk, Krap, Old Farts and Sexy Bitch.
What is the reasoning followed in such cases? Consideration can be had in this regard to a decision in which application was made for registration of the word FCUK. The approach adopted by the British Registrar of Trade Marks was that the best barometer of the impact of a mark on public perception is evidence resulting from the actual use in the market. In this regard it was noted that respectable traders have been involved in a significant trade in FCUK branded goods with an almost complete absence of negative reaction from customers. Also, any offence that was caused was not as a result of the use of FCUK per se, but rather by the context in which the trade has chosen to use the letters in a promotional context. Registration of the mark was allowed. What approach should be followed in the instances where a well-known mark is combined with foul language?
In this regard it should be pointed out that the Constitutional Court did recognise the fact that the creation of an unfavourable association with a mark could be relevant. However, if it is accepted, as the Court did accept, that a parody is unlikely to be seen by members of the public as emanating from a well-known proprietor, and thus that it is unlikely to have a negative impact on the proprietor’s image, such a mark could in fact be accepted by the Registrar. This would imply that registration can be obtained for a trade mark which includes another well-known trade mark, or a parody thereof. It is to be hoped that the Registrar will consider the combination of a well-known mark with a comment that is clearly unsavoury, to be unable to qualify for registration in terms of the Act.
It is one thing to accept an abstract “lewd” phrase, another to allow registration of it in conjunction with a famous mark, in relation to which millions of rands have been expended to establish a positive image amongst consumers. In many countries, including the perceived liberal United States, the use of a mark having a sexual connotation, or referring to drugs, has been prohibited. For instance, “cocaine” in the typical Coke script format. It is not always easy to draw the line though, as for instance the registration of Opium, for perfumes, proves. Another example is the registration of Priest for furnaces! Examples where the Registrar did consider marks to be offensive are Shaka Zulu for liquor, and Rent-a-Maid for cleaning services.
In the Laugh It Off matter the Court made reference to so-called target parodies, where there is comment on the owner of the mark. The other format is “weapon” parodies, where the famous mark is hi-jacked to comment on an unrelated issue. The latter is said, by some American jurists, not to enjoy freedom of speech protection. This could count against the three applications mentioned earlier. There was also an element of social criticism in the Laugh It Off case, which is absent from the three earlier examples. It is also arguable that, technically, there is a difference between the right to use, and the right to register, where the Registrar, as an organ of the state, will place his seal of approval on an unsavoury trade mark. For instance, should the drawing of a sexual nature, presented as a parody of the well-known Standard Bank slogan, which was marketed by the Laugh It Off business, be allowed onto the Register of Trade Marks? Would it serve some societal purpose? The Constitutional Court seems to have sidestepped the issue of a moral free or neutral judgement on the issue of freedom of speech.
Justice Sachs referred thereto as a “vexed question.” It is apparent that the judgement of the Constitutional Court in the Laugh-it-off case might have raised more questions than it has answered.
Dr Wim Alberts is a partner of Bowman Gilfillan Inc. In Johannesburg. He has been in practice for 12 years, and specializes in trade mark related litigation. Prior to joining the firm, he lectured on competition law at the University of South Africa, and was the legal advisor of the competition board. He was awarded the LLD degree by the University of South Africa, with a thesis on the relevance of prior use in trade mark disputes. He is also a research fellow of the Department of Mercantile Law of the University of the Free State.