Member Article

Greta Thunberg has the ability to divide opinion like few other celebrities, with a surprising number of people finding her strangely threatening.

Perhaps it’s simply because Greta is always in the news, for instance, managing to winTime Magazine’s2019 Person of the Year award at the age of 17. She has been in the news again, this time in the context of trade marks. This topic is considered to be less incendiary (no pun intended) than climate change, but these days, one never knows what will cause online anger or resentment to flare up (again, pun not intended) like a wild fire (to overlabour the point), in Australia.

According to a Reuters report, Greta is applying to register both her own name, GRETA THUNBERG, and the name of her movement, FRIDAYS FOR FUTURE, as trade marks. The article provides no details as to what countries these applications have been filed in, or what goods or services have been covered. Some online digging however, revealed three European Union trade mark applications for FRIDAYS FOR FUTURE, GRETA THUNBERG and SKOLSTREJK FOR KLIMATET device (translated to “school strike for climate”). The applications were all filed in the name of “Stiftelsen the Greta Thunberg and Beata Ernman Foundation” in international service classes 35, 36, 41 and 42.

There are two interesting quotes from Greta on the matter. One describes the motivation behind the filings:“My name and the FridaysForFuture are constantly being used for commercial purposes without any consent whatsoever”.The other, in which she displays her signature honesty, may come back to haunt her: “I assure you, I and the other school strikers have absolutely no interest in trade marks. But unfortunately it needs to be done.”

It would be distinctly off brand for Greta to enter the lucrative merchandising market à la Star Wars, so one understands where the quotes originate from. Whether this is the correct approach remains to be seen. A valuable intellectual property asset such as the GRETA THUNBERG and FRIDAYS FOR FUTURE trade marks can be successfully leveraged to ensure a significant passive income stream to support the cause she is fighting for.

I would certainly buy a Greta Thunberg T-shirt and coffee mug. Save the planet and enjoy your ethically sourced coffee at the same time? Seems like a great business model. The Lego® figurine will be an instant collectable while the Greta Barbie® line extension may include a yacht?

Alas, her motivation for filing trade marks do not appear to be commercial in nature. So, does she need them, and will the filings accomplish what she set out to do?

In an article entitled “Greta Thunberg Does Not Need a Trademark Registration”, Thomas Williams suggests that Greta doesn’t need to go down the road of trade mark registration. Williams, who focuses on the situation in the USA, makes the point that trade mark registrations need to be related to particular goods or services, and that at this point in time, it’s difficult to see what goods or services Greta could claim to offer under her name. Williams suggests that Greta should simply avoid the costs, hassles and delays involved in trade mark registration. Given the quotes above, it is difficult to argue Williams’ point.

Williams argues further that, because Greta is so famous, US law provides her with enough protection by way of unregistered rights to stop any third party capitalising on her fame: “Given her recent renown, if not fame, in connection with climate activism, Thunberg has likely already established protectable rights under the unfair competition provisions of the federal Lanham Act.”

Williams goes on to explain that the unfair competition provisions of US law would allow Greta to claim “false endorsement”.He gives examples of a number of celebrities who have successfully used these provisions in the USA, including singers Tom Waits and Ariana Grande, and basketball player Michael Jordan. Williams further tells us that the estates of Elvis Presley and Marilyn Monroe have successfully raised ”right-of publicity” claims.

So, what would the situation be in South Africa?

When it comes to trade mark registration, an intention to use is an essential requirement and Greta’s earlier comment would be unhelpful, potentially leaving the trade marks open to attack. In South Africa, trade marks cannot be registered for defensive purposes only and the intention to use must be present at the time of filing. This does not seem to be the case above.

In addition to trade marks, Greta could rely on the common law action of unlawful competition for misuse of her image rights. As we have explained in a number of earlier articles, in South Africa, the starting point is that competition is legal. But competition isn’t lawful when it is unfair or dishonest, or when it offends against the general sense of justice of the community. A judge might be receptive to the argument that exploiting the fame of a child climate activist offends against the general sense of justice of the community, or simply takes unfair advantage of her image rights.

The lesson here is that trade marks can be, and are, very important in protecting the “brand” of a celebrity. There are, however, certain obligations that come with owning trade marks and celebrities looking to protect or exploit their “brand” are advised to discuss it with their trade mark attorney.

André J Maré Executive IP [email protected] +27 82 440 1517