true parody of trade marks as used in his publication.57 And as counsel for FXI accepted during argument,
some of the appellant's other caricatures can be classified as parody and others not.
Page 166 of [2004] 4 All SA 151 (SCA)
[37] As in the case of copyright infringement, parody cannot per se be a defence against trademark infringement in
terms of section 34(1)(c). It is nevertheless a factor like the other factors mentioned above that has to be
considered in determining whether a defendant's use of a mark contrary to the provisions of section 34(1)(c)
is constitutionally protected.58 A good example of fair parody is to be found in the judgment of the Paris
Tribunal de Grand Instance in Greenpeace France v Esso.59 Greenpeace used, instead of the trademark ESSO,
the mark E$$O in a context in which it criticised Esso's ecological record. The court found that to be
permissible because Greenpeace should be able to, in its writings or on its internet site, denounce, as it
considers appropriate to the goal pursued, the environmental impacts and human health risks caused by
certain of Esso's industrial activities. The court pointed out that this freedom is not absolute and it can be
subject to the restrictions necessary for the protection of the rights of others. Although the mark E$$O refers
to Esso's trademark, Greenpeace did not aim to promote its products or service commercially but used E$$O
for polemical purposes. This underscores the view that parody in France is not a per se trade mark defence
but that the exception of parody appears to be allowed in relation to trade marks provided, inter alia, that the
parody was not made for commercial purposes and does not overstep the limits of parody.60
[38] Another illustration is the recent decision in Mattel Inc v Walking Mountain Productions.61 The defendant
produced artistic photographs which parodied the lifestyle represented by Barbie dolls. The court dismissed
the dilution claim on the ground that tarnishment caused merely by an editorial or artistic parody which
satirises plaintiff's product or its image is not actionable under an antidilution statute because of the free
speech protection provided by the First Amendment.62
View Parallel Citation
[39] On the other hand, in Mutual of Omaha Insurance Co v Novak,63 the defendant, who was protesting nuclear
proliferation, used the trade mark of an insurance company to make his point on Tshirts and coffee mugs.
This use was found not to be parody because the defendant was not commenting on the plaintiff's trade mark
or business. In AnheuserBusch Inc v Balducci Publications64 the defendant placed a fake advertisement,
which it thought humorous, in which the plaintiff's beer Michelob was represented as an oily product. The
intended message concerned an oil spill which had no connection with Michelob and water pollution in
general. No other justification was proffered for the damaging implication that Michelob contained oil. In
balancing the trademark owner's rights against that protected under
Page 167 of [2004] 4 All SA 151 (SCA)
the First Amendment, the court found that the First Amendment defence had to yield to Michelob's rights.
[40] German law appears to be similar. According to Nicola Dagg and Emma Alanko65
"German legal protection against dilution is subject to the condition that it is 'without due cause'. In applying this
provision, German courts attempt to strike a balance between the interests of the trade mark owner and most
usually the constitutionally protected right to free expression. In striking this balance, German courts have
considered:
1.
Use of the slogan 'Bild Dir keine Meinung' (do not form your own opinion), which alluded to the advertising
slogan 'Bild Dir Deine Meinung' (form your own opinion) of the wellknown tabloid paper Bild (which is also
the German word for 'picture' and 'to form'). This was held to be a critical expression with regard to the
quality of the Bild newspaper, which did not amount to an infringement.
2.
Use of the word Mordoro (Mord = murder) in a mock advertisement for Marlboro cigarettes which was
included in a nonsmokers calendar. This was held not to infringe the Marlboro trade mark because it was
protected by the constitutional right to freedom of expression."
On the other hand, the use of the expression Deutsche Pest was held to be an infringement of the mark
Deutsche Post because it did not contain a specific criticism of the German post office, but merely amounted to
a mindless denigration of the post office.
[41] It follows from this analysis that the appellant's reliance on parody as a defence is misconceived. The
appellant is using the reputation of Sabmark's wellknown trade mark, which has been established at
considerable expense over a lengthy period of time, in the course of trade in relation to goods to the
detriment of the repute of the mark without any justification. Such use and detriment is unfair and constitutes
an infringement of the said provision. The appellant's reliance on the freedom of expression is misplaced. It
did not exercise its freedom, it abused it.
View Parallel Citation
Order
[42] The order issued by the court below was formulated in terms too wide. It does not limit the interdict to use in
the course of trade or on use in relation to goods or services as required by section 34(1)(c). It included the
trade mark "Carling Black Label" within its scope although not infringed by the appellant. Restraining not only
the appellant but also its servants and agents was unnecessary and extending the order beyond the
infringing mark to "any other mark" was wrong. However, these aspects were not issues in the appeal and do