South Africa: Hello – All The IP You Need Is Right Here!

Last Updated: 10 April 2015
Article by Ilse Du Plessis

Most Read Contributor in South Africa, September 2016

Ditch the law journals - if you want to learn about trade mark law, all you need to do is follow celebrity gossip. Within the space of just a few weeks we've had three very instructive stories.

First, Taylor Swift gets a right bollicking from her peers for having the temerity to register certain of her lyrics as trade marks for a range of merchandise. Lyrics like 'This Sick Beat' and 'Cause We Never Go out Of Style'. A certain Ben Norton - who one can't help noticing seems to be far less well known than Taylor Swift - is so aggrieved by Swift's grubby commercialism that he describes trade marks as 'a direct attack on one of the most fundamental and inalienable rights of all – our freedom of expression'. He classes Swift as 'bourgeoisie', one of those horrible grasping little people who, if you give them an inch, 'will take a mile, and everything else you have in the process.' Dreadful people who have 'already privatized land, water and words.'

Then we see Scarlett Johansson getting slapped with a cease-and-desist letter the moment she launches a band called The Singles. The trade mark infringement claim comes from a band called just that, The Singles. Again expressions of outrage, with the leader of the band saying that a simple Google search would have revealed the existence of his band. And this: 'It's hard to believe that any musician would do something like that to another band. The Singles has been my life for the past 16 years. We have worked so incredibly hard to make it a success.'

Finally we get to hear the name Hall & Oates once again. Not because they've produced a great piece of music. But rather because they're irked by the fact that an 'artisanal breakfast food firm' has launched a breakfast bar called Haulin' Oats. Something the duo feels constitutes trade mark infringement, being a 'phonetic play on Daryl Hall and John Oates' well-known brand name.'

So what trade mark lessons can we learn from this celebrity chit-chat?

Well, from the Taylor Swift story we learn that celebrity endorsement is a big thing these days, and for Ben Norton to suggest that it's something that's unworthy of 'creatives' is a little bit naďve. Although Taylor Swift is unlikely to go into the business of manufacturing clothes and trinkets herself, she is very likely to want to do commercial deals with companies that do make these things. Companies that can see the merit in having their products linked with a well-known singer.

The endorsement does, of course, not need to be limited to the celebrity's name or image, something that was the focus of the famous Rihanna passing-off case, where Topshop used Rihanna's image on a t-shirt without her consent. There's no reason why the endorsement shouldn't relate to something else such as a nickname, a song title, or even lyrics from a song. One thing that you can say about lyrics is that they're likely to be far more distinctive and registrable than many of the brand names that companies come up with.

As for Scarlett Johansson, well failing to do a search was indeed a rookie error. The leader of The Singles is quite right – a Google search may well have been all that was needed. It's only if the Google search is clear that you need to do more comprehensive trade mark registry searches to see if the trade mark is available.

Perhaps it never struck the movie star that band names can be registered as trade marks. Band names can, of course, be registered in class 41 of the classification system, a class that covers all forms of entertainment services. And, as anyone who knows anything about trade marks knows, band names tend to be hotly contested, particularly by those old rockers who either hoped to die before they got old, or mistakenly believed that the vast fortunes that they made all those years ago would see them through until the very end – many of these oldies are, of course, discovering that old hits have to be rehashed and bands re-formed. And some of them are now cursing the fact that no-one thought to take naming issues seriously all those years ago!

Finally from Halls & Oates we learn that the issue of trade mark similarity is multi-faceted. A trade mark that's visually and conceptually different from another trade mark may still be confusingly similar in law if it's phonetically the same. We also learn that trade mark rights can extend way beyond the core business. Hall & Oates may possibly have registered their name in product areas that are far removed from entertainment services, such as foodstuffs (possibly in anticipation of a celebrity endorsement deal). And even if they didn't, there's always trade mark dilution, the protection that's given to well-known trade marks that are used by others in totally unrelated product areas. Perhaps it's dilution that will come to the band's aid in this case.

Time to get back to my glossy mag!

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