with "Black Labour" and "Carling Beer"
Page 155 of [2004] 4 All SA 151 (SCA)
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 litigation
[6]
In the court below the trademark owner applied for an interdict based on section 34(1)(c). Initially the
appellant raised the constitutionality of the provision but later abandoned it. (As will appear later, antidilution
provisions are common in major democracies that hold freedom of expression in high regard.) Cleaver J found
against the appellant. He apparently accepted the submission that the message conveyed by the Tshirts was
that SAB has in the past exploited and continues to exploit black labour and is guilty of racial discrimination
and that the words conjure up this country's racist past by falsely attributing to SAB the lusty and lively
exploitation of black labour since 1652, the year during which the Dutch settled in the Cape. This message, he
held, established that the appellant's use of its caricature of the Black Label trade mark would be likely to
take unfair advantage of or be detrimental to the distinctive character or repute of the trade marks in
question. Freedom of expression, the learned Judge held, did not justify the actions of the appellant because
the appellant deliberately exploited the marks for commercial gain (it is an admitted fact that it will not be able
to sell its Tshirts without using caricatures of wellknown marks) and its lampooning or parodying was not a
harmless clean pun which merely parodies or pokes fun but bordered on hate speech. He accordingly held
that the appellant's conduct was covered by section 34(1)(c) and issued an interdict. (I shall revert to its
terms in due course.)
[7]
Cleaver J granted the necessary leave to appeal to this court. We granted the Freedom of Expression
Institute ("FXI") leave to intervene as amicus curiae and it was duly represented by counsel. As will become
apparent, the issues before us on appeal were limited. In particular, it should be noted, the constitutionality
of section 34(1)(c) was accepted by all.
View Parallel Citation
The approach to trademark infringement
[8]
Concern is expressed from time to time about the pervasiveness of trade marks, the fact that trademark
owners tend to be voracious and that trademark protection is not always kept within its legitimate bounds.
Nurse, in his affidavit, raises this as a justification for attacking wellknown marks. He says, for instance, that
"they" (presumably he and his colleagues) are doing their bit to promote freedom of expression in a world
where commercial expression and debate is being crowded out in the name of the protection of a brand. He
also believes that brands tend to control ideas and concepts. Some of this, but not all, is hyperbole.6
[9]
Prof David Vaver, for one, has pointed out that intellectual property cannot be treated as an absolute value.
Its value should be weighed up against a range of values of at least equal importance such as the "right of
people to imitate others, to work, compete, talk, and write freely, and to
Page 156 of [2004] 4 All SA 151 (SCA)
nurture common cultures."7 This Court, too, on occasion emphasised that intellectual property rights should
be confined within their legitimate boundaries.8 If so confined, the concerns expressed can be accommodated
considerably.
[10] On the other hand, and in spite of some judicial resistance in certain quarters,9 trade marks are property,
albeit intangible or incorporeal. The fact that property is intangible does not make it of a lower order. 10 Our
law has always recognised incorporeals as a class of things in spite of theoretical objections thereto.11 Also,
simply because, as the appellant has it, trademark protection and branding are the result and part of a
"capitalistic" economy does not mean that trade marks may be disregarded by those who do not believe in
such an economy.
[11] But then again, intellectual property rights have no special status. The Constitution does not accord them
special protection and they are not immune to constitutional challenge. Even if constitutional, their
enforcement must be constitutionally justifiable.12 The problem, as will appear
View Parallel Citation
later, is that the question of how far guarantees of freedom of the media and expression affect intellectual
property rights, is, except for the USA, somewhat virgin territory.13
Antidilution and trademark infringement
[12] In Beecham Group Plc v Triomed (Pty) Ltd14 we pointed out that the function of a trade mark, in terms of the
definition in the Act, is to indicate the origin of the goods or services. In a footnote we quoted the European
Court of Justice where it held that the essential function of the trade mark is to guarantee the identity of the
origin of the marked product to the consumer or end user by enabling him, without any possibility of
confusion, to distinguish the product or service from others which have another origin. 15
[13] Beecham (supra) also pointed out that the protection granted to a trade mark by section 34(1) and its