High Court fails to see the joke in BLACK LABEL parody

South Africa

In the landmark decision of South African Breweries International (Finance) BV v Laugh it off Promotions (Case 3271/2002), the High Court has ruled that Laugh it off's sale of T-shirts printed with the phrase 'Black Labour - White Guilt' in lettering that matched South African Breweries' BLACK LABEL mark violated the company's trademark rights. The decision has been seen as a serious blow to freedom of expression in South Africa.

South African Breweries, now known as SABMiller, owns a number of trademarks for beer, including a BLACK LABEL mark featuring white text on a black background and the mark AMERICA'S LUSTY, LIVELY BEER. It had not registered its marks to cover clothing. Laugh it off was selling satirizing T-shirts printed with a black label bearing, in the same script as the BLACK LABEL mark, the words 'Black Labour' and underneath 'White Guilt'. The phrase 'Africa's lusty, lively exploitation since 1652' also featured. South African Breweries brought trademark infringement proceedings against Laugh it off, claiming that the use of these phrases diluted its marks in contravention of the Trademarks Act.

The anti-dilution provisions are a recent addition to the Trademarks Act and state that:

"The rights to a registered trademark which is well known in South Africa will be infringed by unauthorized use in the course of trade in relation to any goods or services, of an identical or similar mark, if such use is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the well-known mark, notwithstanding the absence of confusion or deception."

The High Court found in favour of South African Breweries and, with the aim of clarifying dilution law, endorsed the following principles:

  • Dilution of a trademark occurs when, among other things, there has been blurring or tarnishing of the mark at issue. In this case, tarnishing was established because BLACK LABEL is a well-known mark and Laugh it off's satirizing version damaged its repute and was likely to offend certain people.

  • The term 'similar mark' set out in the act should not be interpreted too widely; an appropriate meaning would be that of the Oxford English Dictionary, namely 'having a marked resemblance or likeness'.

  • The deliberate exploitation of a mark for commercial gain (as was the case here) may be distinguished from non-exploitative uses of trademark parodies. Misappropriation of the selling power or advertising value of a well-known mark, said the court, is commercially injurious to the mark owner and results in the impairment of the goodwill of its business.

The court also rejected Laugh it off's defence that it was entitled to a constitutional right to freedom of speech. It noted that even the Constitution constrains this right where the statements are hurtful or incite harm on the basis of race or ethnicity.

Chris Job, Adams & Adams, Pretoria

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