Abstract
Trademarks serve as an indication of origin of goods or services and differentiate such goods or services from those of another party. A trademark can take many shapes and forms and in particular to this discussion, can also be offensive. Some countries have highly developed systems in place designed to determine whether such offensive marks may be registered and therefore protected under their relevant Acts. There are however, some countries which do not have such systems in place, or that such systems are not developed enough to allow for a proper evaluation of offensive trademarks before they can be registered.
South Africa‟s landmark case Laugh it off Promotions CC v SAB International (Finance) BV t/a Sabmark International dealt with the question of offensive trademarks. It dealt with it in the context of dilution with two registered trademarks and developed the test accordingly. In the process, Laugh it Off indirectly applied this test not only to two registered trademarks but also to unregistered marks by applying section 16(1) of the Constitution (freedom of expression) broadly. This application is unsatisfactory as it results in indirectly undermining section 10(12) of the Trade Marks Act 194 of 1993 which grants power to the registrar to deny marks which are offensive or contra bonos mores from being registered. In addition there is no further guidance within our own law (case law or legislation) which can assist in determining the registrability of an offensive trademark.
This study seeks to identify the factors and systems used in foreign jurisdictions in respect of offensive trademark registrations and whether such trademarks can be registered. It further seeks to outline the shortcomings of the South African system with regards to offensive trademark registrations. This study concludes with how such shortcomings may be supplemented by factors considered in foreign jurisdictions.
LL.M. (Commercial Law)