Laugh IT off Promotions CC v South African Breweries International (Finance) Bv t/a Sabmark International

• Jurisdiction: South Africa
• Citation: 2005 (2) SA 46 (SCA)

Laugh IT off Promotions CC v South African Breweries International (Finance) Bv t/a Sabmark International
2005 (2) SA 46 (SCA)

2005 (2) SA p46

Citation	2005 (2) SA 46 (SCA)
Case No	242/2003
Court	Supreme Court of Appeal
Judge	Harms JA, Streicher JA, Navsa JA, Mthiyane JA and Comrie JA
Heard	August 30, 2004
Judgment	September 16, 2004
Counsel	P Hodes SC (with A R Sholto-Douglas) for the appellant.; P Ginsburg SC (with R Michau) for the respondent.; G J Marcus SC (with A D Stein) for the amicus curiae.

Flynote : Sleutelwoorde E

Intellectual property — Trademark — Infringement — Trade Marks Act 194 of 1993, s 34(1)(c) — Whether use of mark detrimental to distinctive character of F mark — Appellant parodying respondent's well-known mark used on beer bottle labels by using it on T-shirts which it sold on commercial basis — Message on T-shirts likely to create in the mind of consumers particularly unwholesome, unsavoury or degrading association with the respondent's marks — Such constituting use detrimental to distinctive character or repute of registered mark as envisaged by G s 34(1)(c).

Intellectual property — Trademark — Infringement — Trade Marks Act 194 of 1993, s 34(1)(c) — Whether parody of registered mark permissible — Appellant parodying respondent's well-known mark used on beer bottle labels by using it on T-shirts which it sold on commercial basis — Message on T-shirts likely to create in mind of H consumers particularly unwholesome, unsavoury or degrading association with the respondent's marks — Parody not defence per se against trade mark infringement in terms of s 34(1)(c) — Parody nevertheless factor to be considered in determining whether defendant's use of mark contrary to provisions of that section constitutionally protected — Use by appellant unfair and constituting I infringement of s 34(1)(c).

Intellectual property — Trademark — Infringement — Trade Marks Act 194 of 1993, s 34(1)(c) — Appellant parodying respondent's well-known mark used on beer bottle labels by using it on T-shirts which it sold on commercial basis — Message on T-shirts likely to create in mind of J

2005 (2) SA p47

consumers particularly unwholesome, unsavoury, or degrading association A with respondent's marks — Defence that interdict granted in terms of s 34(1)(c) infringed appellant's freedom of expression — Appellant entitled to use mark in relation to goods or services provided that not in course of trade and its freedom of expression hardly affected thereby — Reliance on freedom of expression misplaced as appellant not having exercised its freedom, but abused it. B

Headnote : Kopnota

The respondent applied in the High Court for an interdict based on s 34(1)(c) of the Trade Marks Act 194 of 1993 preventing the appellant, a close corporation, from marketing T-shirts which it alleged infringed the respondent's trademarks. The respondent C alleged that the offending use of the marks was a caricature of the neck and body labels of beer bottles of its brand which used the general layout and colours of the registered mark but replaced the words 'Black Label' with 'Black Labour' and 'Carling Beer' with 'White Guilt'. The laudatory part on the label was replaced by 'Africa's lusty, lively exploitation since 1652' and 'no regard given worldwide'. The High Court granted the interdict. In an appeal D against the decision the appellant denied that the use of the mark was detrimental to the distinctive character of the mark and that the granting of the interdict infringed the right to freedom of expression. It alleged that the message on the T-shirts was a parody of the respondent's marks and was, as such, entitled to protection under the head of freedom of expression. E

Held, that it was fair to pose the question whether the message on the T-shirts was not likely to create in the mind of consumers a particularly unwholesome, unsavoury or degrading association with the respondent's marks. The answer had to be in the affirmative and, put in another way, would anyone who had seen the appellant's T-shirts be able thereafter to disassociate it from the respondent's trademarks. The answer to that question had to be in F the negative. (Paragraph [26] at 59D - E.)

Held, further, that the message on the T-shirts was materially detrimental to the repute of the trademarks concerned. (Paragraph [28] at at 59G/H.)

Held, further, as to the defence that the interdict infringed freedom of expression, that it was important to note what s 34(1)(c) did not forbid and the extent to which it did not impinge on freedom of expression: The appellant was free to use its G caricature in the course of trade subject to a proviso that it could not use it in relation to goods or services. The appellant could use it in relation to goods or services provided it was not in the course of trade and its freedom of expression was hardly affected. (Paragraph [30] at 60C - E/F.)

Held, further, as in the case of copyright infringement, parody could not per se be a defence against trademark H infringement in terms of s 34(1)(c). It was nevertheless a factor, like the other factors, that had to be considered in determining whether a defendant's use of a mark contrary to the provisions of that section was constitutionally protected. The appellant's reliance on parody as a defence was misconceived. The appellant was using the reputation of the respondent's well-known trademark, which had been established at considerable expense over a I lengthy period of time, in the course of trade in relation to goods to the detriment of the repute of the mark without any justification. Such use and detriment was unfair and constituted an infringement of the provision. The appellant's reliance on the freedom of expression was misplaced: It had not exercised its freedom, it had abused it. (Paragraphs [37] and [41] at 63B and 64H - I.) J

2005 (2) SA p48

Held, accordingly, that the appeal had to be dismissed but the terms of the interdict granted by the Court a quo were A too wide and had to be restricted in some respects. (Paragraph [43] at 65C - E.)

Cases Considered

Annotations

Reported cases

A Sheimer (M) SDN BHD's Trade Mark Application [2000] RPC 13: referred to B

American Express Co v Vibra Approved Laboratories Corp 10 USPQ 2d 2006 (SDNY 1989): referred to

Anheuser-Busch Inc v Balducci Publications28 F 3d 769 (1994): compared

Ashdown v Telegraph Group Ltd[2002] RPC 5 (CA) 235 ([2001] ECWA Civ 1142): referred to C

Bata Ltd v Face Fashions CC and Another2001 (1) SA 844 (SCA): referred to

Beecham Group plc and Another v Triomed (Pty) Ltd2003 (3) SA 639 (SCA): referred to

Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another2000 (2) SA 771 (SCA): D referred to

Campbell v Acuff-Rose Music Inc510 US 569 29 USPQ 2d 1961: compared

Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117 (ECJ): referred to

Cliffs Notes Inc v Bantam Doubleday Dell Publishing Group Inc 886 F 2d 491 (1989): compared E

Compagnie Générale des Etablissements Michelin"Michelin & Cie v National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada) (TD) [1997] 2 FC 306: referred to

DaimlerChrysler AG v Javid Alavi (t/a Merc)[2001] RPC 22: compared

Dallas Cowboys Cheerleaders Inc v Pussycat Cinema Ltd604 F 2d 200: referred to F

Dr Seuss Enterprises LP v Penguin Books USA Inc109 F 3d 1394 (1997): referred to

First National Bank of Southern Africa Ltd v Barclays Bank plc and Another2003 (4) SA 337 (SCA): compared

GRUR 1985 (7) 550: referred to

Gucci Shops Inc v RH Macy's Co 446 F Supp 838 (1977): compared G

Hard Rock Café Licensing Corp v Pacific Graphics 776 F Supp 1454 (1991): compared

Islamic Unity Convention v Independent Broadcasting Authority and Others2002 (4) SA 294 (CC): referred to

I ZR 79/92 1995 [26] IIC 282: referred to

Joy Music Ltd v Sunday Pictorial Newspapers (1920) Ltd [1960] 1 All ER 703 (QB): referred to H

Khumalo v Holomisa and Others2002 (5) SA 401 (CC): compared

Klimax Manufacturing Ltd and Another v Van Rensburg and Another [2004] 2 All SA 301 (O): referred to

LL Bean Inc v Drake Publishers Inc811 F 2d 26 (1987): referred to

Ladbroke (Football) Ltd v William Hill (Football) Ltd[1964] 1 WLR 273 (HL): referred to I

Levi Strauss & Co v Tesco Stores Ltd[2003] RPC 18 (Ch): referred to

Lighthawk, Environmental Air Force v Robertson 812 F Supp 1095; 25 USPQ 2d 2014: referred to

Moseley dba Victor's Little Secret v V Secret Catalogue Inc 123 S Ct 1115; 65 USPQ 2d 1801 compared J

2005 (2) SA p49

Mutual of Omaha Insurance Company v Novak 648 F Supp 905; 231 USPQ 963: compared A

Mutual of Omaha Insurance Company v Novak836 F 2d 397 (1987): compared

MV Snow Delta: Serva Ship Ltd v Discount Tonnage Ltd2000 (4) SA 746 (SCA): referred to

National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd2001 (3) SA 563 (SCA): referred to B

Pfizer Ltd and Pfizer Inc v Eurofood Link (UK) Ltd[2000] ETMR 896 (Ch): compared

Premier Brands UK Ltd v Typhoon Europe Ltd and Another[2000] FSR 767 (Ch) 786: referred to C

Rogers v Grimaldi875 F 2d 994 (1989): referred to

Rogers v Koons960 F 2d 301 (1992): referred to

Rotisseries St-Hubert LTEE v Le Syndicat des Travailleurs (EUSES) de la Rotisseries St-Hubert de Drummondville (CSN) 17 CPR (3d) 461: compared

S v Mamabolo (E TV and Others Intervening)2001 (3) SA 409 (CC) (2001 (1) SACR 686; 2001 (5) D BCLR 449): referred to

Suntrust Bank v Houghton Mifflin Co268 F 3d 1257: referred to

Triomed (Pty) Ltd v Beecham Group plc and Others2001 (2) SA 522 (T): referred to

Wagamama Ltd v City Centre Restaurants Plc[1995] FSR 713 (Ch): referred to E

White v Samsung Electronics America989 F 2d 1512 (1993): referred to.

Unreported cases

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