Tuesday 8 October 2013

Darren Olivier

E-Tolls - bringing IP to the top table

There are two guarantees in life - death and taxes. Whilst Afro Leo is trying to get IP included in that exclusive list, he must concede that death has been with us forever and heated discussions over tax started well before copyright or the first registered patent or trade mark. 

Right now, in the busy hub of one of Africa's financial centres - Gauteng - is an emotive discussion and legal action over a proposed tax on highways (E-tolls) that will considerably affect its commuters. The latest development in the saga are billboards that take the mick out of the leading party:

The African National Congress have claimed that they did not erect them and the identity of the advertiser was until yesterday, unclear. As the general view is that the tax is sadly just as inevitable as death is on these roads, Afro Leo was delighted when Alicia Louw (Adams & Adams) sent him her article, reviewed by Debbie Marriott, bringing IP into the conversation. 

"Once I recovered from my initial chuckle, I wondered whether there is any action that the African National Congress (“ANC”) can take to have the billboard removed, should it not violate any of the laws and regulations enforced by Independent Electoral Commission (“IEC”).

From my initial reaction and that of the callers into the morning talk show that I was listening to when I first heard about the billboard – driving along the soon-to-be-tolled N1 highway, it appears that no one believes that the billboard emanates from, or is endorsed by the ANC.  If so, the advertisement is unlikely to be regarded as ordinary infringement of the ANC trade mark which would require that motorists be confused into thinking that the advertiser is the ANC.  Further, although it clearly disparages the ANC, the information can hardly be regarded as false. To my mind, it falls squarely in the realms of satire or parody - it certainly catches the eye and is amusing.
Alicia Louw

In case the ANC is not amused, the question then becomes ‘is the statement on the billboard likely to dilute or erode the reputation that has been established in and to the name and trade mark ANC, and can the ANC approach a Court for the additional protection against infringement that is afforded to well known trade marks?.

The statement on the billboard reminds me of the Laugh it Off case. In this case the Constitutional Court found that a parody of a well known beer slogan did not infringe trade mark rights that had to be balanced against the T-shirt makers constitutionally protected right to freedom of expression.  The parody was therefore permissible.  Similarly, I believe that the ANC will be hard pressed to persuade a Court that use of this slogan infringes any of their well known trade mark rights. 

It seems that whoever is responsible for the billboard may have managed to colour within the lines, as far as trade mark law and the Advertising Standards Authority’s code is concerned."

Afro Leo notes that Alicia's thoughts were penned at a time when the identity of the advertiser was not known. Now that the DA have claimed that it emanated from them, the impact of the parody is immediately reduced and it seems that the DA could simply rely on the fact that the use of the ANC trade mark is descriptive, which is a defence to infringement. However, the massive coverage that the billboard (and hence the DA) received was because, by not disclosing their identity, the DA had caused great interest (not, it seems, confusion) over the origin of the billboard. In order to do so, they had used the IP of the ANC. It does raise the question then as to whether the initial interest confusion doctrine should form part of our trade mark law (to the extent that it does not already) but also, to what extent - mere interest does not seem to be enough, as Alicia has commented?

Darren Olivier

Darren Olivier

Subscribe via email (you'll be added to our Google Group)