South Africa: In The News Today: Trade Marks

Last Updated: 12 June 2017
Article by Ilse Du Plessis

Most Read Contributor in South Africa, July 2017

We trade mark lawyers like to tell our clients to take their brands seriously: adopt trade marks that are distinctive and therefore easy to protect; do trade mark searches; and register in all the countries where the trade marks are used. Clients sometimes roll their eyes when they hear this. But, fortunately for us lawyers, there's a constant stream of big name trade mark scare stories in the media. These stories, such as the ones below, often make the points far better than we ever could.

Starbucks: It's been reported that the coffee giant has got itself into a spot of bother by introducing a "Unicorn Frappuccino". Turns out that a much smaller coffee business in New York, The End, has a very successful "Unicorn Latte". The End has filed a US trade mark application for Unicorn Latte, but this hasn't yet gone through to registration. The End's complaint relates not only to the use of the name, but also to the appearance of the product – both drinks are remarkably pink, although The End's coffee is made of healthy ingredients like ginger root and dates, whereas the Starbucks product is made of milk and artificial sweetener.

Starbucks might well have avoided this problem if it had first done a trade mark search to reveal registered trade marks and pending applications. It seems strange that a major company like Starbucks didn't do a search, but it's also possible that the company was aware of the other product and simply took the view that there was no commercial risk.

As for the name Unicorn, this is a good one from both a branding and a trade mark perspective – it's likely to stand out from the crowd, so it's distinctive and registrable. The pink colour is also interesting – it is possible to get trade mark registrations for aspects of a product's appearance such as colour, but, in practice, this is very difficult, and it will generally require compelling evidence of enormous use and consumer recognition.

Blue Ivy, the daughter of Jay Z and Beyoncé: The story of the celebrity couple's attempts to register the name of their child as a trade mark has been in the news for years. Initially, we were told that the couple – who had announced the name before the birth, but only filed trade mark applications after it – had been shocked to find that other parties had filed applications for Blue Ivy in the period between the announcement and the filings. The latest story is that the couple has problems with an events company that claims it's been using the trade mark for a number of years, and that the celebs aren't entitled to registration because Jay Z has publically stated that the applications were filed simply to stop others using the name, not with a view to any actual use.

The lesson here is simple – keep schtum! If you're going to launch a brand, get your trade mark applications in before anyone knows of your plans – trade mark registration is largely a first-come, first-served situation. And don't ever say that you don't plan to use it. Trade mark registration is all about intention to use (in many cases, the applicant needs to sign a form saying it intends to use) and actual use (in most countries, a trade mark registration can be cancelled if it isn't used). And this is as it should be – it would be highly unjust if companies could simply block off trade marks that they had no actual interest in.

Durex: Durex is all about taking sensible precautions. The company behind the brand, LRC Products Ltd, recently brought trade mark cancellation proceedings in China against a Chinese company that had registered Durebya for a wide range of goods including condoms. The Chinese court cancelled this registration, finding that Durex was a well-known mark in China at the time when Durebya was registered, and deciding that the trade mark Durebya was a copy or imitation of Durex that was likely to dilute its distinctiveness.

Few trade marks are as famous as Durex. The lesson for most companies is simple – if you're doing business in China, register your trade marks there. The good news is that the Chinese trade mark system is more foreign-brand owner-friendly than it once was.

The Eagles: If you know your music, you'll know that this group's biggest hit was about a mysterious hotel, a hotel where some dance to remember and some dance to forget, a hotel where you can check out any time you like but you can never leave. The song Hotel California was released way back in 1976 and, although the band still uses the name on merchandise, there are no trade mark registrations (although some applications have apparently now been filed).

The band has been in the news of late because it's taken legal action against a hotel in California that's representing that it was the inspiration for the song. It's done this in various ways – it has, at certain times, actually called itself Hotel California, but it also plays music by the Eagles and sells hotel T-shirts featuring the word "legendary".

Although the obvious lesson here is that trade marks should be registered, there are sometimes other avenues available – there are unfair or unlawful competition laws in much of the world, and in countries like South Africa, there's an action for passing off where a number of factors might be considered to determine whether or not there is consumer confusion.

Hopefully the points have been well made!

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.

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