“Laugh it off”

• 1. Unlike the position in the UK, European Union and under the United States (US) federal law, Sec. 34(1)(c) of the South African Trade Marks Act does not require actual loss (in the sense of unfair advantage or detriment) but its likelihood; i.e. it requires a probability of the occurrence of material loss.

• 2. Where no economic harm has been shown, the fairness of parody or satire or lampooning does not fall for consideration. In South African jurisprudence, and unlike in the US, there are no enclaves of protected expression such as parody or satire and therefore the mere characterisation of an expression as such would not be decisive of what is fair use under the anti-dilution protection of Sec. 34(1)(c) because ordinarily all categories of expression, save those excluded by the Constitution itself, enjoy constitutional shield and may be restricted only in a way constitutionally authorised.

• 3. The mere fact that the expressive act may indeed stir discomfort in some and appear to be morally reprobate or unsavoury to others is not ordinarily indicative of a breach of Sec. 34(1)(c). Such a moral or other censure is an irrelevant consideration if the expression enjoys protection under the Constitution.

• 4. In a claim under Sec. 34(1)(c), a party that seeks to oust an expressive conduct protected under the Constitution must, on the facts, establish a likelihood of substantial economic detriment to the claimant’s mark.

• 5. In a claim based on tarnishment of a trade mark, the probability of material detriment to the mark must be restricted to economic and trade harm. In essence, the protection is against the detriment to the repute of the mark; and not against the dignity but the selling magnetism of the mark.

• 6. In the context of a tarnishment claim, it is important in understanding likely harm relative to the selling power and popularity of the mark in question.