Mutual of Omaha Insurance Company v Novak 648 F Supp 905; 231 USPQ
963
161
Rogers v Grimaldi 875 F 2d 994 (1989)
160
Rogers v Koons 960 F 2d 301 (1992)
164
Suntrust Bank v Houghton Mifflin Co 268 F 3d 1257
164
Wagamama Ltd v City Centre Restaurants Plc [1995] FSR 713 (Ch D)
156
White v Samsung Electronics America 989 F2d 1512 (1993)
156
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Judgment
HARMS JA:
Introduction
[1]
This appeal relates to trademark infringement and more particularly infringement by way of dilution through
tarnishment. Section 34(1)(c)
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of the Trade Marks Act 194 of 1993 provides the statutory basis for such a claim by stating that the rights
acquired by registration of a trade mark are infringed by
"(c)
the unauthorised use in the course of trade in relation to any goods or services of a mark which is identical
or similar to a trade mark registered, if such trade mark is well known in the Republic and the use of the
said mark would be likely to take unfair advantage of, or be detrimental to, the��distinctive character or the
repute of the registered trade mark, notwithstanding the absence of confusion or deception: Provided that
the provisions of this paragraph shall not apply to a trade mark referred to in section 70 (2)."1
The related question is whether or not, on the facts of this case, a finding of infringement would impinge on
the appellant's entrenched freedom of expression, which is contained in section 16(1) of the Constitution, and
which includes
"(a)
freedom of the press and other media;
Page 154 of [2004] 4 All SA 151 (SCA)
(b)
freedom to receive or impart information or ideas;
(c)
freedom of artistic creativity; and
(d)
academic freedom and freedom of scientific research."2
[2]
The trademark owner ("Sabmark") the respondent in this court is a Dutch company which forms part of the
SAB group of companies. It holds the trade marks of the group. A local member of the group is The South
African Breweries Ltd. It produces and sells beer and uses a series of Carling Black Label trade marks under
licence from Sabmark.3 It is common cause that the name mark "Carling Black Label"4 has not been infringed
and the case concerns two marks which consist of a representation of Black Label stickers on the neck and
body of a beer bottle.5 The discussion will be limited to one of these because it is not in dispute that what
applies to the one applies to the other.
[3]
The label (see the annexure to the judgment) on the neck contains the words "Carling" and "enjoyed by men
around the world", all in black uppercase type on a red background between two golden lines. The sticker for
the body of the bottle is much larger and is oblong. The background is red. There are also two gold lines, the
upper one containing the phrase "America's lusty, lively beer" and the lower one "Brewed in South Africa", all
in black upper case. In a parallelogram with a black background the words "Carling Black Label Beer" appear
"Carling" and "beer" in red typeface and "Black Label" in white script.
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[4]
The appellant is a close corporation and the alter ego of Mr JB Nurse. He graduated in journalism and politics
at Rhodes University and holds a postgraduate diploma in enterprise management. He has a special interest
in the effect of trade marks and branding on society. The appellant, he says, is the result of the thought,
research and input of a collective of graduates and students from Rhodes. "They" are "conscientious objectors
to nichemarket selfhood and massmarket mediocrity" who "grew up to be brand atheists". In order to bring
this point home, the appellant markets clothing mainly, it would seem, Tshirts using wellknown logos and
trade marks "back on" themselves. Nurse calls it "ideological jujitsu" in which the weight of a brand is used
against itself.
[5]
In relation to the Black Label neck and body mark, the jujitsu grip consists of what may be characterised as a
caricature of the said trade mark used on Tshirts shown as an annexure. It employs the general layout and
colours of the registered mark. However, the message is different. The words "Black Label" were replaced