This is a commonly known hand gesture, known as the “devil’s horns” in the rock scene.
Mr Simmons described the mark sought to be protected as “a hand gesture with the index and small fingers extended upwards and the thumb extended perpendicular“. It is important to appropriately describe a trade mark when applying to register it so that the Trade Marks Office, consumers and other businesses know with sufficient clarity what mark protection is sought for. The mark must be described with clarity and precision.
He applied to register the mark in class 41 for “entertainment, namely, live performances by a musical artist; personal appearances by a musical artist”. In the USA a trade mark application can be filed claiming either actual use thereof in trade to date, or an intention to use the mark. Mr Simmons claimed that the mark was first used by him or by a company related to him or one licensed by him, or by a predecessor in interest at least as early as 14 November 1974, and was first used in commerce at least as early as 14 November 1974. He provided a photograph of himself displaying the hand gesture as evidence of his use of the sign.
Recently, though, Forbes Magazine reported that “Simmons has apparently reconsidered whether he might have valid trademark rights to the hand gesture, as he expressly abandoned the application with the United States Patent and Trademark Office. It is also noted that his application drew a fair amount of criticism from fellow musicians and others who saw the application as a shameless overreach by Simmons. Simmons, one of the most successful musician-entrepreneurs in history, owns a stable of other trademark registrations through his Gene Simmons Company.” Nice try, God of Thunder!
What would the likely outcome have been had Mr Simmons applied to register the hand gesture in South Africa?
It is possible to register a range of different marks as trade marks in South Africa. The most common types of marks are names, slogans, logos and devices. There are, however, certain “esoteric” marks that can also be registered as trade marks. These are the so-called non-traditional trade marks (e.g. smells, sounds, etc.). The South African Trade Marks Act No. 194 of 1993 defines a mark as:
“any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned”
The types of signs that can constitute as “marks” is widely defined. Provided that the sign is capable of graphic representation, it qualifies as a mark. Technically, it is possible to represent a hand gesture graphically. The devil is, however, in the detail. In order to ensure that the correct protection is obtained, it is extremely important that the sign be adequately represented and described on the application. It must be described clearly and precisely in the application (and in the Register) in order for consumers, the Trade Marks Office and other businesses to understand the ambit of the rights. The representation must be is clear, precise, self-contained, easily accessible, intelligible, durable and objective (the Sickmann criteria). It will require a description of the sign to be endorsed on the application similarly to what Mr Simmons has done.
Qualifying as a mark is but only the first step in the enquiry. The next step is that the mark must be a “trade mark”. A trade mark is defined as:
“a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person”
Although not often done in trade, hand gestures can technically be used, or be intended to be used, to designate the goods or services of a specific business. However, in order for it to be accepted for registration the hand gesture must also be:
“capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person”.
It can either be inherently so distinctive or have become distinctive by reason of prior use of the sign.
This is where gesture marks may run into difficulty. Technically, hand gestures are capable of having meaning and could distinguish the goods or services of one trader from those of another. However, inherently there is a problem with such marks. Hand gestures are not traditionally understood by consumers to be indicators of the origin of a business – even if they are novel. Businesses do not use hand gestures to identify their goods or services. A similar problem exists with shape marks. These marks are of very low inherent distinctiveness.
If a hand gesture is made by a representative of a company as part of an advertisement, consumers are highly unlikely to attach any significance to the gesture. Consumers simply do not consider hand gestures to be source identifiers. This is particularly so given the traditional use of hand gestures in South African society.
This does not, however, mean that it would be impossible for businesses to ever register hand gestures. It is possible to do so, but significant advertising and consumer education will need to take place before it can be done.
A novel hand gesture, used exclusively by a business for some time, can acquire distinctiveness, and be registrable as trade mark. Consumers will have to be educated of the value / significance of the hand gesture. It must become a symbol of the business. If the hand gesture is first registered as part of a composite device or logo, and the gesture is then later used by the business in trade, the hand gesture may acquire a sufficient level of distinctiveness and be registrable as a trade mark on its own.
An example of one such hand gesture in South Africa would that of the Mamelodi Sundowns soccer team: