Chicken Licken's decision to sue a fast food competitor called Big Jo's is interesting. The complaint was that Big Jo's was using Hot Wings as the name of one of its menu items, a term that Chicken Licken has used  for many years, and one that it has also registered as a trade mark.  The KZN High Court issued an interim interdict (injunction) requiring Big Jo's to stop using the term.

You may be surprised to hear that the name of a menu item can be a trade mark. Yet you only need to think of a menu item name like Big Mac to realise that if it were to be used by another fast food company people might wonder whether there was some connection with McDonalds.  A menu item name is, therefore, sometimes a sub-brand of the restaurant or the fast food chain that uses it. Hot Wings may not be the most distinctive name when it comes to chicken wings, but a descriptive or otherwise weak name can sometimes be protected through trade mark registration, or through the common law action of passing off, if it has been used extensively, and if it has become associated with the business.

The fact that the name Hot Wings is somewhat descriptive may, however, result in Big Jo's arguing that it's simply making descriptive or non-trade mark use of the term, and that there's therefore no infringement.

Another interesting feature of the case is that, prior to Chicken Licken instituting legal proceedings, Big Jo's offered to change the name of its menu item from Hot Wings to Shisa Wings. Chicken Licken refused this offer for the simple reason that 'shisa' is the Zulu word for 'hot,' and Big Jo's is big in the province of KZN. In a multilingual country like ours, a trade mark may be infringed if a translation is used, and there was a famous case where a court held that the magazine trade mark Getaway had been infringed by a competitor that used the Afrikaans translation Wegbreek.

An interesting case all round!

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