| Carling's label |
| Laugh It Off's tee-shirt design |
South Africa's top court has overturned a lower court's ruling, in a decision that marks a victory for free speech over trade mark rights.
In a ruling on May 31, the Constitutional Court gave the go-ahead to Laugh It Off to produce tee-shirts resembling trade marks owned by brewer SABMiller. It is the first time the Court, South Africa's highest, has ruled in an IP case.
The tee-shirts mimic the logo for Carling Black Label, but replace the words "America's lusty, lively beer, Carling Black Label beer, enjoyed by men around the world" with "Black Labour, White Guilt, Africa's lusty lively exploitation since 1652, no regard given worldwide".
SABMiller had argued that the likely detriment to its trade mark was self-evident. But the Constitutional Court decided that SABMiller had to provide evidence of economic loss or detriment to demonstrate the likelihood of damage.
In the absence of such evidence, the Court found that there was no infringement. Its ruling stated that the detriment necessary to prove infringement "must be substantial in the sense that it is likely to cause substantial harm to the uniqueness and repute of the marks, particularly the likelihood of probability of economic detriment to the trade mark".
The 11 judges considered that, as the number of tee-shirts sold was negligible, these sales did not amount to substantial detriment.
The Court said it had to balance the protection provided by the Trade Marks Act with freedom of expression guaranteed by the Bill of Rights in Section 16 of South Africa's Constitution. It did not address the defence of parody.
Owen Dean, a partner of Spoor & Fisher in Pretoria, said: "The comfort to be derived from this case is that the Constitutional Court gave equal status to IP rights and freedom of speech."
But Dean added that the Court had made it clear that the burden of proof is on brand owners. Under South African law, it is only necessary to prove the likelihood of, rather than actual, damage - as long as any assertions are backed up by evidence.
The Court did not indicate the type or amount of evidence that is necessary, but it could encompass, for example, direct loss of sales and cancellation of sponsorship or promotional agreements.
Alan Smith, a partner of Adams & Adams who represented SABMiller, said: "From a practical point of view, it creates serious problems for brand owners. How can you prove the impact of what people see?"
