Member Article

If we keep writing about it, it’s because it keeps happening. I refer here to trade mark infringement claims that make the news for all the wrong reasons – claims that attract shock and ridicule and evoke support for the person who’s supposed to be the “bad guy”. Interestingly, one of the common terms used by trade mark owners who make these claims is “tarnishment”. However, are their reputations being tarnished, or is it the reputation of the trade mark system that’s really being tarnished?

For instance, golf-equipment manufacturer Titleist recently brought a claim of trade mark infringement and dilution against an online store that sells caps and shirts under a logo (font) that looks like the Titleist logo, but features the word “Titties”. In the US legal proceedings, Titleist says that this “intentionally creates an unwholesome and undesirable association – one involving a patently offensive and obscene reference to sexual organs”. It goes on to say that this “tarnishes [the] plaintiff’s Titleist brand identity and reputation.” The case has been reported in some of the more sensationalist newspapers. US lawyers quoted in news reports seem to think that the case is weak for various reasons, such as the fact that there will clearly be no consumer confusion, and the fact that parody is recognised as a defence in the US.

There have been so many of these cases. We’ve seen companies being perceived as humourless bullies, for example: 

North Face: The clothing company with the tagline “Never Stop Exploring” made a big fuss about a 19-year-old who called his product South Butt, with the tagline “Never Stop Relaxing”. To the amusement of many, the youngster put this on his website after he received a trade mark infringement threat: “If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.” 

Chick-fil-A: The US chicken chain with the tagline “Eat Mor Chickin” complained about a farmer who sold T-shirts marked Eat More Kale. This prompted The Economist to label it “bullying”, and to make this remarkable comment: “One entity sells food, the other clothing; only the profoundly stoned or deranged would try to eat a T-shirt or wear a chicken sandwich.” 

Brew Dog: The UK craft brew sensation, a company that championed its “punk” status when it started life, took flak for acting like just another corporate when it started enforcing trade mark rights against a much smaller brewer. 

We’ve also seen that social media now plays a major role, and sometimes results in grovelling: 

Specialized: The cycle manufacturer had to issue a fawning apology after the public turned against it on social media, following a threat by the company to enforce trade mark rights against a cycle retailer. The MD of Specialized admitted that he had “screwed up”. 

A story that’s not dissimilar has recently made the news – the story is so silly that there’s speculation that the demand was electronically generated and that no human considered it. This one involves a blogger whose site is dedicated solely to persuading people to eat as much Olive Garden pasta as they can using a loyalty card. When the blogger received a letter demanding that he cease use of the Olive Garden trade mark, he sent a response pointing out that what he is doing is lawful in the US under the doctrine of “nominative fair use”, a concept that has been described in a US court decision as “where the defendant has used the plaintiff''''s mark to describe the defendant''''s own product” (in South Africa, this might be described as non-trade mark use). 

The response is one of those clearly designed to humiliate a corporation, and therefore one that will be loved by the internet. Here are some extracts from the blog:

“I have helpfully included a link to Wikipedia … for more information on this concept, in case you are new. If you want me to remove references to the Olive Garden from my blog, which I remind you, solely consists of references to Olive Garden, I’m afraid I must decline … if you are asking me to simply add Trademark R Symbols TM, I must also decline … perhaps you are asking me to take down my blog entirely … (this) I would decline, it’s the largest crime against humanity since they started charging extra for toppings … seriously $2.99 for two lousy meatballs … and you’re saying I ripped you off … please respond within nine days, in limerick form.” 

South Africans know all about the famous Black Label case, where SAB, owner of the Black Label trade mark in South Africa, was unsuccessful in its attempt to stop use of the term Black Labour on a T-shirt that had a political message. The majority of the Constitutional Court dismissed the claim on the basis that there was no likelihood of economic damage. Justice Albie Sachs, however, went further and examined the role of parody in some detail. 

Trade mark rights must, of course, be enforced – there would be little point in getting them if they weren’t. But trade mark threats do need to be considered carefully, and companies should at least consider the irreverent nature of the age, the general dislike of bullying, and the power of social media. Even in countries that don’t have legal sanctions for unjustified threats (such as South Africa), the sanctions imposed by bad publicity may be every bit as severe.