South Africa: Chicken Licken’s Hot Wings

Last Updated: 30 October 2012
Article by Lauren Frizelle

Most Read Contributor in South Africa, September 2018

Fast food chain, Chicken Licken, recently obtained an interim interdict in the KZN High Court against a competitor called Big Jo's.  The order required Big Jo's to stop using the term Hot Wings for one of its menu items. Chicken Licken claimed that it has trade mark rights to Hot Wings, having used the term for many years, and having registered it as a trade mark. In its court papers Chicken Licken claimed that the use of the term Hot Wings by Big Jo's gave it 'a tremendous springboard into the market place', with the result that Big Jo's 'start out not on the first rung of the ladder, as everyone else has done, but halfway up, riding on our coat-tails'.  It seems that Big Jo's did try to avoid legal proceedings by offering to change the name of its menu item from Hot Wings to Shisa Wings, but that Chicken Licken turned this offer down. Why? Because 'shisa' is the Zulu word for 'hot'.

The case highlights some interesting aspects of trade mark law. It highlights the fact  that it is sometimes possible to get trade mark rights to a perfectly ordinary word or term, for example one that simply describes the product  – Hot Wings is, of course,  pretty descriptive of a type of chicken fast food.  Every trade mark lawyer will tell you that you should  use a distinctive word or term as a trade mark rather than a descriptive one,  and this is good advice because it is very difficult to get any sort of exclusivity to something that is descriptive of the product. Yet, a word or term that is descriptive of the product, or is in some other way non-distinctive (perhaps because it's a laudatory word or a geographical name), can become distinctive of a single company or product over time if it is used on a considerable scale.  A word or term that has become distinctive through use can in certain cases be registered, and it can in certain cases also form the basis of a successful passing off claim. An example might be South African Airways, which is totally descriptive of the service, but which has in fact become distinctive of one company and which could, in my view, be enforced against third parties. 

Adopting a descriptive or otherwise weak trade mark rather than a distinctive one is, however,  a risky game to play. First, it can take many years to reach a stage of acquired distinctiveness and during this period there is no protection. Second, there's no guarantee that a court will agree with your assessment that your mark has become distinctive through use  - courts have, by way of example, held that Lotto was not a valid trade mark for  lottery services (descriptive), that Premier was not a valid trade mark for banking services (laudatory), and that Century City was not a valid trade mark for retail services (geographical). Third, even if you do get registration or judicial recognition of distinctiveness, your rights may in fact be very limited, and quite possibly restricted to the exact word or term.   Finally, if your trade mark is descriptive there's every chance that you'll be faced with a defence that's specifically provided for in the Trade Marks Act, and which goes like this: we aren't using the  word or term that you've registered as a trade mark, but simply as a way of describing the product. In this case it would involve Big Jo's claiming that its use of Hot Wings was simply a way of describing its spicy chicken wing product.

The case also highlights  that something as little as the name of a menu item can enjoy trade mark rights. The name of a menu item is a kind of sub brand, and comparable examples might be McDonalds' Big Mac or McFlurry, and KFC's Rounder.  Names like these are undoubtedly associated with the chains that offer the products. Trade mark law is essentially about avoiding consumer confusion and, in its court papers, Chicken Licken said this: 'As each day goes by, it is more and more likely that members of the public will associate Big Jo's with Chicken Licken.'   It's quite conceivable that consumers knowing Chicken Licken's Hot Wings might assume that Big Jo's Hot Wings is the same thing, or that there is some sort of connection between the two chains, perhaps through franchising or co-branding.  All that's necessary in cases like this is to show that a significant number of people might wonder whether there is some connection.

Lastly, the case  highlights a trade mark issue that arises in a multilingual country like ours. Chicken Licken refused Big Jo's offer to change the name from Hot Wings to Shisa Wings because much of its clientele in KZN is Zulu speaking. A translation of a registered trade mark can, in certain cases, infringe the registration, and in my view Shisa Wings would be an infringement of Hot  Wings. There have been cases on this point in South Africa: in a case involving the magazine trade mark Getaway, a court held that the use of the Afrikaans translation Wegbreek was an infringement; in another case involving the wine trade mark Chameleon, a court held that use of Lovane (derived from 'ulovane', the Xhosa word for 'chameleon') was not an infringement.  The cases are not easy to reconcile, but there is no doubt that translations are something that you need to consider when adopting a trade mark.

A whole lot of trade mark law in one little case!

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions