South Africa: Imagine There's No Protection

Last Updated: 11 October 2017
Article by Gaelyn Scott

Most Read Contributor in South Africa, October 2018

The recent spat between Yoko Ono and a Polish drinks company highlights the importance of registering trade marks.

What happened in this matter was that John Lennon's widow, Yoko Ono, threatened a small Polish lemonade manufacturer with legal action. The issue? The product that the Polish company sells in a number of European countries is called John Lemon. If this had been all, it's conceivable that Ono may have reacted magnanimously, viewing the man behind the company as a working-class hero. There was, however, something in the way the Polish company used other things – imagery of John Lennon, imagery of John Lennon-style spectacles and the expression Let it Be – that made it abundantly clear that it simply saw the former Beatle as a ticket to ride. It was these things that made it impossible for Ono to give peace a chance. It was these things that caused her to – dare we say it – act a bit like a jealous guy!

Ono's claim was that the product infringed both trade mark rights and certain personal rights. The Polish company considered the threat carefully and decided on a simple strategy – we can work it out! The deal that the parties reached is simple – existing stocks are to be phased out by the end of October 2017 and the name of the product will be changed to On Lemon. For the Polish company, it will be just like starting over. It clearly isn't happy – it's made it known that the only reason it settled the case is that it doesn't have the money to travel the long and winding road that is trade mark litigation. Mind games ... forever!

The Polish company's impecunity is perhaps fortunate for Ono, because the trade mark position isn't very clear at all – although there is a European trade mark registration for John Lennon, this is in fact predated by a European trade mark registration that the Polish company has for John Lemon. Although there are other possible causes of action, these are generally somewhat problematic. If the Polish company hadn't settled this case, Ono may well have needed help.

What are these other causes of action? Some countries recognise rights that are sometimes loosely known as "image rights", but there's not a great deal of uniformity. In the US, for example, there is protection for "publicity rights". In South Africa we talk of a "personality right" that covers a right to identity, but there really is very little law on this. In South Africa, the Advertising Standards Authority Code can also be relevant. This provides that no advertiser can portray a live celebrity without their consent, unless that portrayal doesn't interfere with the celebrity's right of privacy, and doesn't amount to unjustifiable commercial exploitation.

In the UK, there aren't any image rights and it's necessary to resort to the law of passing-off. A passing-off claim depends on reputation and the likelihood of confusion. There was a very big case a few years back involving the singer Rihanna – Top Shop used a photo of the singer on a T-shirt that it was selling, but it never bothered to get her consent. Rihanna sued the store for passing-off and the UK Court of Appeal upheld the claim, saying that there would be consumer confusion, in the sense that many people would wrongly believe that she had endorsed the product. The fact that Rihanna has a history of product endorsement did seem to play a big role in the court's decision.

The strongest right that a celebrity can have, however, will always be a trade mark registration. In order to get a valid trade mark registration, all you need is an intention to use the trade mark on the particular goods or services, and this can be indirect use through licensing or endorsement. It is possible to protect a whole range of things through trade mark registrations, including names, photos, likenesses, signatures, catchphrases, logos and gestures. Once you have a trade mark registration, you can prevent any unauthorised use of that trade mark, or any similar trade mark that is likely to cause confusion.

I said that Ono seems to have succeeded in her dispute with the Polish company because of financial clout rather than trade mark rights, and this certainly happens from time to time. There has, in fact, recently been a case in Croatia where a language school succumbed to unspecified threats and stopped using billboard adverts that featured a photo of Melania Trump alongside the words "Just imagine how far you can go with a little bit of English" – the school claimed that its intention was to show how useful English-language skills are, rather than mock the US first lady's English. Often, however, there won't be an imbalance of power, and it will then all be down to trade mark rights.

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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