This past week in South Africa, the new hydration drink named PRIME, created by YouTube sensations Logan Paul and KSI, has become the latest craze. PRIME's rapid ascent to cult-like status among its creators' millions of followers offers valuable insight into the power of a trademark, as well as the potential role of influencers in marketing it - and indeed in defending it.
Since its U.S. launch in January 2022, PRIME has made massive consumer waves, eventually reaching South African shores. The drink initially sold at prices ranging from R400 to R1600 per bottle, until Shoprite Checkers announced its status as the official retail partner of PRIME in South Africa, offering the drink at a mere R39.99 per bottle.
One might wonder why anyone would pay R39.99 for a hydration drink. A more pertinent question, though, is whether the "PRIME" trademark has any protection in South Africa. Trademark registration in the country can take up to three years from the date of application or filing. In PRIME's case, the image mark was filed in November 2022, and registration is still pending.
Influencers to the Rescue: A Novel Approach to Defending a Trademark
While awaiting registration, PRIME has two potential options: PRIME can turn to the common law of passing off in an effort to stop other proprietors from misrepresenting their products as somehow connected with the PRIME brand. However, proving a passing-off claim is no simple feat, as it hinges on the aggrieved party's reputation. The Caterham Car Sales & Coach Works Ltd v Birkin Cars (Pty) Ltd court ruling established that the injured party must possess a reputation among a significant number of people, including current and potential customers.
Alternatively, the aggrieved proprietor might seek refuge in section 35 of the Trade Marks Act 194 of 1993, a statutory remedy available to owners of well-known but unregistered foreign trademarks. In McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another, the court examined the concept of "well-known" and the necessary level of public awareness. The court concluded that a mark is considered "well-known" if it is so within the target market of the branded goods or services. Moreover, the court found that the required "level of awareness" is akin to the law of passing off, in that a substantial portion of the target market must be aware of the mark.
A third, more unconventional option would be to rely on the brand's consumer base and social media influencers to "drive protection" for the trademark. As PRIME has become a status symbol among its customers, influencers promoting the brand emphasise the drink's authenticity and originality. Consumers interested in PRIME are thus more likely to seek out the genuine article, valuing the "PRIME" mark over the actual product.
Brands Entering South Africa: Leveraging Influencers for Trademark Defence
For brands entering the South African market, such as PRIME, employing a strategy that utilises influencers to defend their trademark can be an effective approach. By leveraging the power of social media, influencers can emphasise the importance of authenticity and originality, discouraging consumers from purchasing counterfeit or fake products. This approach not only protects the brand's trademark but also enhances its value and reputation.
PRIME's entry into the South African market serves as an excellent case study on the significance of trademark protection and the potential role of influencers in defending it. With a powerful trademark and the right influencer strategy, brands can effectively navigate the South African market and ensure their continued success.
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