Trade-Mark Tarnishment: Should We ‘Laugh It Off’ all the Way to ‘Telkomsucks’ and ‘Hellcom’?

• Jurisdiction: South Africa
• Date: 16 August 2019
• Citation: (2004) 16 SA Merc LJ 727
• Author: Tana Pistorius
• Pages: 727-740
• Published date: 16 August 2019

Trade-Mark Tarnishment: Should

We ‘Laugh It Off’ all the Way to

‘Telkomsucks’ and ‘Hellcom’?

TANA PISTORIUS*

University of South Africa

In this article I shall examine the blurred boundaries between the freedom

of expression and the infringement of intellectual property rights. This issue

f‌i rst arose in SAB International t/a Sabmark International v Laugh It Off

Promotions,1 a dispute that brought into play the freedom of expression and

the tarnishment of trade marks.

This case has recently been quoted as authority for the proposition that the

unauthorized use of another’s registered trade mark by registering a ‘protest’

domain name (such as ‘telkomsucks.co.za’, and even ‘fucktelkom.co.za’2) does

not constitute trade-mark infringement but is rather the legitimate exercise of

the freedom of expression.3

Dilution: Blurring or Tarnishment?

Trade-mark infringement traditionally occurs where unauthorized use is

made in the course of trade of an identical or confusingly similar mark in

relation to the same or similar goods or services than those for which the trade

mark is registered.4 Section 34(1)(c) of the Trade Marks Act offers additional

protection to a trade-mark proprietor whose mark is well known: unauthorized

use of a well-known mark in the course of trade in relation to any goods or

services, where such use would be likely to take unfair advantage of, or be

detrimental to the distinctive character or reputation of the well-known mark,

also constitutes infringement.

A trade-mark proprietor who wants to rely on trade-mark dilution as a cause

of action faces the following hurdles in terms of section 34(1)(c): she must

establish that her trade mark is well known, that the allegedly infringing mark

has been used in the course of trade in relation to any goods or services, and

that such use is likely to dilute the distinctive character of her registered mark.5

Where these hurdles are cleared, trade-mark dilution has taken place.

727

* BA (Pret) LLB (Unisa) LLM LLD (Pret). Professor of Intellectual Property Law in the Department

of Mercantile Law, University of South Africa, Pretoria.

1 [2003] All SA 454 (C).

2 Note that this domain name was registered in protest against the actions of Telkom; the same

applies to the domain names <www.telkomsucks.co.za> and <www.hellkom.co.za>: see <http://www.

itweb.co.za/sections/feedback/feedcopy.asp?CommentID=3481>.

3 See Helen Burt ‘Constitutional Protection of Parody not to Be Laughed off’ 21 August 2004

Legalbrief, accessible at <http://www.legalbrief.co.za/view_1.php?artnum=12298>.

4 See s 34(1)(a)–(b) of the Trade Marks Act 194 of 1993.

5 For an explanation of the reasons for the introduction of anti-dilution provisions in trade-mark

legislation, see BR Rutherford ‘Misappropriation of the Advertising Value of Trade Marks, Trade Names

and Service Marks’ in J Neethling (ed) Onregmatige Mededinging/Unlawful Competition (1990) 55–57.

(2004) 16 SA Merc LJ 727

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