Member Article

Offensive trade marks, which we have written about previously, have again been in the news of late. Two US trade mark cases have dominated the headlines, and one of these has made it all the way to the US Supreme Court. This certainly suggests that Americans feel strongly about the issue of offensive trade marks. As South Africans are likely to have equally strong feelings on the issue of names that might offend particular groups, these US cases are worth discussing.

The first case is one we have written about before, the case of the US football team the Washington Redskins. The team’s trade mark registrations for its name were cancelled on the basis that they contravene the section of the US trade mark legislation (the Lanham Act) that deals with offensive or disparaging trade marks. This decision to cancel the registrations was upheld by the US Trademark Trial and Appeal Board on the basis that the trade marks contain “matter that is likely to disparage”.

The finding was based on the fact that a survey suggested that some 30% of Native Americans would be offended by the term “redskins”, making up a substantial proportion of the relevant class. The appeal board also held that the team could not rely on the defence of laches – in other words, acquiescence or delay in challenging the trade mark registrations – because this was a matter of public interest, rather than one that affected the interests of a single complainant. The level of public interest in the case was reflected in President Obama’s request to the team to change its name, suggesting that it wasn’t an appropriate name for a football team based in the nation’s capital.

However, the decision does not stop the team from using the name, which it has apparently been doing since 1932. What it does mean is that the team has no trade mark registrations for the name. The team clearly believes that trade mark registration is important as it had asked the US Supreme Court to hear the case. The Supreme Court, however, recently refused to hear the case, so it will go to a federal appeals court instead. The team has, among other things, adopted the predictable argument of lack of consistency – why are there US trade mark registrations for Yellowman, Red Man, Black Tail and Moonie?

The second case involves an Asian-American rock band called The Slants. The band wants to register its name as a trade mark and its application has been refused. The band has used some different arguments, talking of “re-appropriating” or “reclaiming” a hurtful term, “owning the stereotype” and turning a racial epithet into “branding of pride”. The band claims that the Asian community has responded positively to its efforts to monopolise the term.

The US Supreme Court has agreed to hear this case, after a US Court of Appeal for the Federal Circuit held that the section in the Lanham Act that deals with disparaging trade marks violates the First Amendment regarding freedom of expression. The judges in that case pointed to some extraordinary inconsistencies. An example that’s relevant right now is that the trade mark “The Devil is a Democrat” was registered, but the trade mark “Have You Heard Satan is a Republican” was refused. Outraged Democrats will be pleased to hear that the trade mark authorities showed a little more consistency when they refused both “Democrats Shouldn’t Breed” and “Republicans Shouldn’t Breed”. Other examples include registrations for “FAG – Fabulous and Gay”, “Dangerous Negro”, “Off-White Trash” and “Dago Swagg” being allowed, yet applications for “Marriage is for Fags” and “The Christian Prostitute” were refused.

So, what about South Africa, which has a strong and vibrant constitution? The South African Trade Marks Act says that registration will be refused if its use would be “contrary to law”, “contra bonos mores” (contrary to good morals), or “likely to give offence to any class of persons”. There’s no specific mention of race or religion, but there can be little doubt that a name that offends a racial group will be refused. It is also interesting to note that the more recent Alternative Dispute Resolution Regulations relating to domain names in South Africa talk of an “offensive registration”, defined as one that “advocates hatred that is based on race, ethnicity, gender or religion and/or that constitutes incitement to cause harm”.

But, could a trade mark owner whose application for registration is refused on the basis that the trade mark is likely to give offence to a class of persons claim that the provision in the Trade Marks Act contravenes the Constitution? Section 16 of the Bill of Rights, the freedom of expression provision, does, of course, protect freedom of expression. It says that everyone has the right to freedom of expression, which includes freedom of the media and freedom to impart information or ideas. Yet, there is also a limitation, which says that this right does not extend to advocacy of hatred that is based on race, ethnicity, gender or religion, and that constitutes incitement to cause harm. In my view, it is likely that a racially offensive name would be regarded as one that advocates hatred based on race or ethnicity. So, we don’t believe that the prohibition on offensive trade marks breaches the Constitution.

Nonetheless, South Africa will be watching further developments in the US with great interest.

Gaelyn Scott

trade mark attorney director head of IP department

[email protected]

cell: +27 83 632 1445