(b)
incitement of imminent violence; or
(c)
advocacy of hatred that is based on race, ethnicity, gender or religion, and that constitutes
incitement to cause harm."
[17] During the course of argument I was referred to judgments emanating from the United States of America and
the Court of Appeals in Paris involving the parodying of trade marks and the freedom of speech. There have
been many trade mark parody cases in the United States, but because of the differences between the
legislation in that country and in ours, and also the distinction made in that country between commercial
speech and noncommercial speech, definitive guidance cannot be obtained from these cases. Furthermore
the question of confusion in the minds of the public also plays a role in the antidilution proceedings in the US,
something which does not apply in this country. The case in the French court of appeals concerned the
parodying by the Greenpeace organisation of a trade mark owned by a wellknown oil company. One of the
main grounds for refusing the interdict sought by the oil company was that Greenpeace's use of the
company's trade mark was not done for commercial gain, which is ofcourse not the case in the matter under
consideration. However, since the respondent's case that it is merely lampooning the applicant's marks, I
consider the following extract from the judgment of the South District of New York in Tommy Hilfiger Licensing,
Inc v Nature Labs, LLC No 99 CIV.10713 (MBM) to be instructive and apposite.
"I agree with the conclusion of the District Court in Jordache: 'When the association is essentially a harmless clean
pun, which merely parodies or pokes fun at the plaintiff's mark, tarnishment is not likely'."
[18] Mr Hodes submitted that the use by the respondent of the applicant's marks was justified because it was an
expression of the respondent's right to freedom of artistic activity, but I have come to the conclusion that such
use exceeds the limits of freedom of speech and expression afforded to the applicant by the Constitution and
that in the weighingup process, I must favour the applicant. The dividing line between the freedom of speech
and the statutory protection afforded the applicant is a thin one, but is nonetheless one which has been
transgressed by the respondent. My conclusions are based on the following:
18.1 The respondent is deliberately exploiting the applicant's marks for commercial gain.
Page 463 of [2003] 2 All SA 454 (C)
18.2 It cannot sell its products without using the marks.
18.3 Its lampooning or parodying of the applicant's marks is not a "harmless clean pun which merely
parodies or pokes fun" at the respondent's marks. It goes further than that by introducing the race
factor, something which our Constitution and our new democracy are at pains to avoid. While the
respondent's use of the marks may not amount to hate speech as contemplated in section 16(2)(c) of
the Constitution, it can, I believe, be said to border on hate speech. The provisions of the Promotion of
Equality and Prevention of Unfair Discrimination Act 4 of 2000 highlight the importance which the
legislature places on eliminating racial friction. Section 10 of that Act provides that no person may
publish, propagate, advocate or communicate words based on one or more of the prohibited grounds
against any person that could reasonably be construed to demonstrate a clear intention to
(a)
be hurtful;
(b)
be harmful or to incite harm;
(c)
promote or propagate hatred.
The prohibited grounds are defined inter alia a s
"(a)Race, gender, sex, pregnancy, marital status, ethnic or social origin, colour, sexual orientation, age, disability,
religion, conscience, belief, culture, language and birth; . . ."
In my view the use by the respondent of the applicant's marks can be said to demonstrate an intention to be
hurtful or harmful to the applicant inasmuch as they are based on race, ethnic or social origin, and colour.
[19] The applicant's claim accordingly succeeds with costs, which costs shall include the costs attendant on the
employment of two counsel and the following order is issued:
The respondent by itself or through its servants or agents is restrained from infringing the rights of the
applicant acquired by the registration of trade mark no. 79/3675 CARLING BLACK LABEL in class 32, no.
91/9236 CARLING BLACK LABEL neck and body label (colour) in class 32 and no. 91/9237 CARLING BLACK
LABEL neck and body label (1991) in class 32 by using the mark depicted in Annexure A7 accompanying the
affidavit of Jaap Romein and Graham Holford or any other mark the use of which takes advantage of or is
detrimental to the distinctive character or the repute of the applicant's trade marks.
For the applicant:
P Ginsburg SC and R Michau instructed by Adams & Adams, Pretoria
For the respondent:
PB Hodes SC and AR SholtoDouglas instructed by Murphy Wallace Slabbert Incorporated, Cape Town
Footnotes
1 Also reported at [2001] 2 All SA 126 (T) Ed.
2 Also reported at [1996] 4 All SA 1 (A) Ed.