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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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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