BY Ilse du Plessis
Can “Black Lives Matter” be trade marked?
Recent reports in the publication World Trademark Review (“WTR”) tell us what we probably could have anticipated. It hasn’t taken very long for people to jump on the “Black Lives Matter” bandwagon and start filing some pretty dodgy trade mark applications.
For the benefit of readers to whom the events of the past few weeks have been all a bit of a blur, here’s a quick heads-up. George Floyd was a African American man who was arrested in the US city of Minneapolis. In the process of arresting Floyd, a police officer knelt on Floyd’s neck for a considerable period of time. Despite the fact that Floyd said “I can’t breathe” the officer did not remove his knee and Floyd died. The incident sparked protests around the world, which took place under the banner “Black Lives Matter”.
So what trade mark applications have been filed since then?
- In the USA there’s “I Can’t Breathe” covering t-shirts, hats, surgical masks and advertising services.
- In the EU there’s “George Floyd” for clothing, toys, foodstuffs, alcoholic and non-alcoholic drinks. The report makes the point that the applicant, who is apparently from Turkey, has no apparent connection to the family of George Floyd.
- In the UK there’s “Black Lives Matter” for clothing and “I Can’t Breathe” for charitable services, with the latter having a disclaimer reading “This trade mark is to be used for charitable works and not for personal gain on the back of recent unfortunate events”. The magazine has been in contact with the applicant who claims that there will be two organisations ie “Black Lives Matter” focused on education and “I Can’t Breathe” being a “voice for the young people”. The trade marks will be used for charitable purposes in order to help inner-city children in Manchester access private education.
Immoral and offensive trade marks
The magazine has interviewed various trade mark experts and there seems to be a consensus that the trade mark applications could and certainly should be refused on one or more grounds namely bad faith, public policy, morality and offensiveness. One trade mark attorney drew parallels with the trade mark applications for Je Suis Charlie shortly after the Charlie Hebdo attack in Paris, and MH370 shortly after the disappearance of the Malaysia Airlines plane.
There’s been quite a bit of focus on immoral or offensive trade marks over recent years and in most trade mark statutes you’ll find a section that prohibits the registration of such trade marks. But the courts in some countries do put a strong emphasis on the right of free expression.
In the USA there was the famous case of Matal v Tam, where the issue was whether the band name The Slants was offensive and therefore unregistrable as a trade mark. In a landmark judgment the US Supreme Court held that it was registrable. The court held that the section of the US legislation that prohibits offensive marks from being registered violates the First Amendments free speech clause. In a later decision the court held that name Fuct was registrable, despite being offensive to some, on the basis of freedom of speech.
In a European decision, a court held that the word Brexit did not contravene the offensiveness prohibition. The judge there said that, even though the word may provoke controversy, it does not promote crime, disorder, discrimination, hate or social unrest.
In South Africa there is a prohibition on the registration of marks that are contrary to law, contra bonos mores (against good morals) or likely to give offence to any class of person. This prohibition appears in section 10(12) of the Trade Marks Act, 1993. The Constitutional Court in the famous laugh-it-off case held that the use of a spoof Carling Black Label trade mark (Black Labour) was lawful because the constitutional right of free expression trumps the constitutional property right which covers trade marks. It is also important to bear in mind that section 16 of the Constitution does say that the right of free expression does not extend to the advocacy of hatred that is based on race, ethnicity, gender or religion, or that constitutes incitement to cause harm.
It’s clearly not a simple issue, but our view for applications for marks like “George Floyd”, “I Can’t Breathe” and “Black Lives Matter” in the name of people with no obvious connection to the events described earlier, probably would be refused in South Africa.
In closing, the “Black Lives Matter” issue has had some other interesting branding consequences. Quaker Oats, a Pepsi company, has announced that it will be “retiring” its Aunt Jemima brand, a brand that has an association with slavery and the Deep South. The Mars company has said that it will “evolve” its Uncle Ben’s brand, a brand which features the likeness of a black man.
Brands certainly don’t operate in a vacuum!
Ilse du Plessis
Executive | IP
+27 82 411 7547