Offensive Trademarks in South Africa

A decision of the United States Supreme Court handed down in June 2017 made news headlines around the world (Matal, Interim Director, United States Patent and Trademark Office v. Tam No. 15-1293).   The issue before the court was whether Mr Simon Tam could register as a trademark his rock band’s name “The Slants”.  The United States Patent and Trademark Office (USPTO) had denied his application for registration because the mark was considered disparaging to those of Asian descent.  This finding was based on a provision in the Lanham Act which prohibits the registration of trademarks that may disparage or bring into contempt or disrepute any persons living or dead.

Mr Tam had appeared before the USPTO’s Trademark Trial and Appeal Board, but to no avail.  He then brought the matter before the Federal Circuit which found the disparagement clause facially unconstitutional.   (Under the constitutional law of the United States, a facial challenge is a challenge to a statute in which the plaintiff alleges that the statute is always unconstitutional and therefore void.  It can be contrasted with an as-applied challenge, which alleges that a particular application of a statute is unconstitutional.)  The USPTO then filed a petition for certiorari, which is an order by which a higher court reviews a case tried in a lower court.  The Supreme Court granted this petition in order to decide whether the disparagement clause is facially invalid under the Free Speech clause of the First Amendment to the United States Constitution.

The Supreme Court confirmed that public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of the hearers.  The bedrock underlying the First Amendment is that government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.  The court went on to state that speech that demeans on the basis of race, ethnicity, gender, religion, age, disability or any other grounds is hateful; however, free speech protects the freedom to express the thought that we hate.  The Supreme Court affirmed the decision of the Federal Circuit that the disparagement clause violates the free speech clause in the First Amendment.

What are the implications of this Supreme Court ruling?

In the United States, the judgement is likely to impact the outcome of an ongoing legal battle being fought by an American football team, the Washington Redskins, to block cancellation of their trademarks on the basis that they are disparaging to Native Americans.   Generally speaking, it is expected that the judgement will now make it easier for persons to register offensive trademarks (marks that consists of racial, sexist or religious insults) in the United States.

From the global perspective, a trademark holder who intends to use their mark in countries other than the United States would face difficulties obtaining corresponding registrations in other countries.   For example, under South African trademark law a mark cannot be registered if it is contra bonos mores or likely to give offence to any class of persons (Section 10 (12) of  the Trade Marks Act 194 of 1993).  In our view, any mark that carries a racist, sexist or religious slur is likely to offend a class of persons.  The size of the class of persons is irrelevant.

The Constitution of the Republic of South Africa recognises that everyone enjoys the right to freedom of expression, which includes freedom of the press and media, freedom to receive or impart information or ideas, freedom of artistic creativity, freedom of scientific research, and academic freedom.  In the case of Laugh It Off Promotions CC v South African Breweries International t/a Sabmark International and Another 2006 (1) SA 144 (CC), the Constitutional Court recognised that all speech is protected but that this right must be balanced against other rights.

A minority judgement by Sachs J denounced the way in which trademark law suppresses free speech.  However, the right to freedom of speech and expression is not absolute and can be limited if the speech advocates hatred based on race, ethnicity, gender or religion, and constitutes incitement to cause harm.   Although a trademark proprietor enjoys the right to express himself or herself through a trademark, that right can be limited if the mark advocates hatred of any kind.

In our view a mark like “The Slants” is offensive and would therefore either be unregistrable or, if registered, susceptible of expungement from the South African Trade Marks Register.