Kulula's proposed new livery has raised a few eyebrows. If
you haven't seen it, it consists of a green plane (no change
there), the name Kulula.com close to the tail (in a
smaller script than before), a tail that's clearly inspired by
and derived from the South African flag (it's much closer to
the flag than SAA's tail), and, most controversially, the
following wording near the front of the plane:
The Most SOUTH AFRICAN Airways
(The words 'SOUTH AFRICAN' are far more prominent than
the others, and they appear in roughly the same place where those
very words appear on SAA's planes).
A fairly aggressive move, given that Kulula has also gone
to court over the legality of SAA's bail-out. But a move
that has, I suspect, been considered very carefully.
This is what a Kulula spokesperson had to say: 'We thought
long and hard about a slogan that truly represents who we are as an
airline and communicates our passion for South African travel, and
this was the most fitting.' Media 24, on the other hand,
reported on the matter in these terms: 'Kulula has
all but hijacked South African Airways' (SAA) recognisable
branding for the proposed livery of their Boeing 737-800
So just what are the trade mark implications of this, bearing in
mind that copying is not necessarily illegal? SOUTH
AFRICAN AIRWAYS is a very descriptive trade mark and
descriptive trade marks are difficult to register, for the simple
reason that they should be available to all. Yet descriptive trade
marks can be registered if they have in fact become distinctive of
one company – this might happen if it has been used by one
company for many years. There's no doubt that SOUTH AFRICAN
AIRWAYS falls into that category, especially if one bears in
mind that there are a relatively small number of players in the
airline industry. So it's very likely that the trade mark
SOUTH AFRICAN AIRWAYS is registered for airline services.
But does that mean that SAA can stop Kulula using the slogan
'The Most South African Airways'?
Probably not. For starters, it's quite clear that a
trade mark registration is only infringed if it's used as a
trade mark. Kulula will no doubt argue that it's using the term
The Most South African Airways in a descriptive or non-trade mark
manner, as part of a slogan and as a genuine description of
the characteristics of its services. Even if that argument fails,
Kulula will argue that there's no likelihood of
confusion. It will argue that a mark which is descriptive but
gets registered because it has become distinctive is always weak
and difficult to enforce. Kulula will argue that a
registration for SOUTH AFRICAN AIRWAYS certainly does not
confer a monopoly on the term 'South African'. And it
will argue that the court must always consider the likely consumer,
pointing to the fact that consumers of airline tickets are
more sophisticated and savvy than consumers of everyday goods like
groceries - it is for this reason that, although the names
Tazz and Jazz might be confused in some product categories, they
won't be confused in the case of cars, because people think
long and hard before buying cars.
SAA may then argue that, even if there's no likelihood of
confusion, its well-known trade mark is being diluted. But that
argument's unlikely to succeed because the concept of dilution
of well-known brands has been pretty much dead in the water ever
since the Constitutional Court dismissed SAB's dilution claim
against Justin Nurse for his Carling Black Labour t-shirts, holding
that there had to be a real prospect of economic loss.
As for the airplane tail, it's possible that SAA has a trade
mark registration for its tail design. But Kulula's tail is, in
my view, not so similar that it will be held to be an
infringement. On top of that, Kulula will no doubt argue that
its tail is simply an indication of the airline's nationality
and an expression of patriotism.
Which leaves SAA with an action for passing off. I think that
SAA's chances may be slightly better here because the overall
effect will then be taken into account. SAA would argue that, as a
result of the goodwill or reputation that attaches to its livery,
people seeing Kulula's planes might wonder if there's some
connection between the companies, some sort of commercial
arrangement. After all, co-branding and code-sharing arrangements
are not uncommon in the airline industry. And it is, of course,
very well-known that Kulula has a connection with British Airways
– Kulula's holding company, Comair, operates British
Airways in South Africa under a franchise arrangement.
It will be fascinating to see what, if anything, SAA does about
this. Perhaps it will simply take the view that imitation is
the sincerest form of flattery!
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