Laugh It Off Promotions CC v SA Breweries International (Finance) BV t/a Sabmark International
[2004] 4 All SA 151 (SCA)
Division:
Supreme Court of Appeal
Date:
16 September 2004
Case No:
242/2003
Before:
LTC Harms, PE Streicher, MS Navsa, KK Mthiyane JJA and RG
Comrie AJA
Sourced by:
PR Cronjè
Summarised by:
J Tyrrell
Parallel Citation:
2005 (2) SA 46 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
[1] Constitutional law Freedom of expression Trade mark infringement Parody as defence.
[2] Intellectual property Trade mark infringement Tarnishment Defence of parody Freedom of expression.
[3] Trade Mark Trade mark infringement Tarnishment Defence of parody Freedom of expression.
Editor's Summary
The appellant sold Tshirts with the slogans and graphics which parodied the trade mark of the respondent. The
respondent had sought and had been granted an order in terms of section 34(1)(c) of the Trade Marks Act 194 of
1993, on the basis that the appellant had infringed upon the respondent's trade mark through tarnishment. The
appellant appealed against the order. The issue before the Court was the interpretation of the section and in
particular the requirement (in order to show infringement of a trade mark) that the use of a mark would be likely to
take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark.
Held The section had to be interpreted in the light of the Constitution of the Republic of South Africa Act 108 of
1996, and applied in a manner that did not unduly restrict a party's freedom of expression.
The Court found that the meaning conveyed by the infringement of the respondent's trade mark by the appellant
was that the respondent had, since time immemorial, exploited black labour without conscience. Anyone who saw
the parodied mark would associate it with the respondent. The message on the Tshirt was therefore materially
detrimental to the respondent.
Considering whether interdicting the appellant from parodying the trade mark would infringe unconstitutionally on
its right to freedom of expression, the Court noted that parody cannot per se be a defence against trade mark
infringement in terms of section 34(1)(c), but was a factor to be considered in determining whether use of a mark
contrary to the section was constitutionally protected. In the present matter the appellant's reliance on parody as a
defence was misconceived and was an abuse of the right to freedom of expression.
However, the order issued by the court below had been too widely formulated as it did 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). The order had
Page 152 of [2004] 4 All SA 151 (SCA)
restrained not only the appellant but also its servants and agents, which was unnecessary. The Court amended the
order accordingly.
Notes
For Trade Marks see:
· LAWSA First Reissue (Vol 29, paras 1306)
Cases referred to in judgment
South Africa
Bata Ltd v Face Fashions CC 2001 (1) SA 844 (SCA)
159
Beecham Group plc v Triomed (Pty) Ltd [2002] 4 All SA 193
(2003 (3) SA 639) (SCA)
156
Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd [2000] 2 All SA
1 (2000 (2) SA 771) (SCA)
156
First National Bank of SA Ltd v Barclays Bank plc [2003] 2 All SA 1
(2003 (4) SA 337) (SCA)
155