Would it ever occur to you that a third party might be able to claim rights in your skin? In the case of art that has been inked into your skin, namely tattoo art, that may well be the case.

A tattoo is an artistic work. If it is original and reduced to a material form (which it very arguably is when it is inked into your skin), copyright subsists. In the case of artistic works, it is the artist or creator of the work who owns the copyright, namely the tattoo artist and not the person on whom the tattoo appears, irrespective of the fact that the latter has paid for his/her tattoo. In short, when you pay your tattoo artist, you pay for the tattoo, not the copyright subsisting in it.

This issue has come up for legal consideration in the United States, more recently in a matter involving Solid Oak Sketches and video game maker Take-Two Interactive. The latter is involved in the creation of the popular “NBA 2K” basketball video game series and Solid Oak Sketches has alleged that it owns the right to exploit the copyright in the tattoos appearing on a number of players in the games.

In a rather astute business move, Solid Oak Sketches purchased the exclusive rights to license certain basketball players’ tattoos from the original tattoo artists. Solid Oaks Sketches has therefore made the argument that, by reproducing detailed depictions of the body art appearing on some of these players in its games, Take-Two Interactive has infringed its copyright. In its defence, Take-Two has argued that it is only depicting the players as they appear in real life, that the focus of the game is not on the players’ tattoos, that the issue is de minimis and, in any event, that a finding in favour of Solid Oaks would result in public figures having to “seek its permission every time they appear in public, film, or photographs”, which would be impractical and untenable.

On face value, copyright infringement has indeed occurred. An original artistic work, which a tattoo undoubtedly can be, has been reproduced without the artist’s authority by a third party in the course of trade and for financial gain. At the heart of copyright law is the idea that creators, artists, should be compensated for their creativity, and there is no reason why the creativity of a tattoo artist should be discounted.

However, a tattoo artist’s rights, thanks to his medium, are less straight-forward than those of artists working on canvas or with clay. Although a tattoo is an artwork which has been reduced to a material form, the material form to which it has been reduced is on a human body. The sport stars appearing in the NBA 2K game series are human beings who, tattoo artists are well-aware, will be photographed, make public appearances and quite possibly wish to exploit their own likeness, being celebrities, for financial gain. Legally, there must be a fairly broad implied licence given by the tattoo artist to the person being tattooed to make use of the tattoo in his or her everyday life, but the argument will turn on how broad that licence might be.

Of course, the difficulty for Take-Two Interactive is that it is not making use of, for example, photographs of the players, which would be “real life” depictions of them, but rather artistic representations of them as the video game versions of them appear in the games. While Take-Two argues that its use constitutes “fair use”, the question is whether it is strictly necessary for it to have included the players’ body art in its depictions, or “avatars”, of them, and whether depictions of that nature would be covered by the implied licence mentioned above. Solid Oak Sketches argues that the answer is a clear no. If the appearance of the tattoos on the players in the game is merely incidental and of minimal focus and importance, this begs the question why the tattoos have been reproduced in the game at all. The depictions being used by Take-Two have been created by it and are not images of the basketball players and their actual skin, as one might find on the cover of a magazine, for example. It is questionable whether the “fair use” defence can successfully be invoked in Take-Two’s circumstances.

Indeed, the US District Court, in 2016, disagreed with Take-Two’s arguments that its use is fair, or that it is de minimis and its motion to dismiss the matter was rejected. One relevant consideration was the fact that, as a medium, unlike films, video games allow viewers to view images in different ways, and for as long as they like. The depiction is not fleeting or momentary.

Given the increasing popularity of tattoos in our popular culture, and quite notably with sport stars, it is recommended that public figures seek assignment of the copyright in their tattoos from their tattoo artists. The National Football League (NFL) in the United States has already been making similar recommendations to its players to avoid them getting into hot water over the depiction and commercial exploitation of their tattoos and our local sports stars in South Africa would be well advised to follow suit.

Acquiring the rights in their tattoos will prevent future claims from the tattoo artists for royalties or other compensation where public figures might wish to exploit their own image, which will naturally include their tattoos, for financial gain (for example, in advertisements, film or television). It will also allow public figures to restrain third parties, on the basis of copyright infringement, from making use of depictions of their tattoos to suggest a relationship between themselves and the public figure when, in fact, none exists. The value in the names and likenesses of celebrities is undeniable and the popularity of celebrity “endorsement deals” and sponsorships is a testament to that. A person who is in the public eye would not want to be limited in any way from exploiting his or her own image and celebrity status.

It is not inconceivable that a person’s tattoo might become so recognisable that third parties might wish to use it to call that person to mind and perhaps suggest an endorsement by that person. A good example of this is the dispute that arose around the film, The Hangover Part II, where one of the characters woke up, with shock, horror and hilarious results, to find Mike Tyson’s well-known face tattoo inked onto the side of his face. Mr Tyson’s tattoo artist took legal action against Warner Brothers for using the tattoo without authority and, although the case settled and the judge did not need to render a decision, the tattoo artist may well have succeeded in court. After all, the artist’s design did not appear on Mr Tyson’s face which, under the implied licence discussed above, would surely be allowable in a film featuring Mr Tyson, but was copied and reproduced on the face of another with the reference to the original tattoo being clear.

As the popularity of “getting inked” continues to mark the prevailing popular culture, legal issues around that ink, particularly intellectual property concerns, will become more prominent.

The matter between Solid Oak Sketches and Take-Two Interactive is one of the few body art disputes that has not, to date, been settled out of court and it will be interesting to see how this matter progresses.

By Nicole Smalberger | Senior Associate



Senior Associate
Trade Mark Attorney

View Profile


Managing IP has recently released it’s list of this year’s leading female intellectual property practitioners, according to IP STARS research, and this year Adams & Adams Partners, Mariëtte du Plessis and Kelly Thompson both made the Top 250 Women in IP list.

The special publication recognises female practitioners in private practice who have performed exceptionally for their clients and firms in the past year. Some were also involved in IP advocacy and / or corporate social responsibility initiatives in their jurisdictions.

The leading female practitioners have been selected from the IP Stars list, due to be announced at INTA Seattle in May. The IP Stars research covers contentious and non-contentious IP work, carried out over a six-month period by an experienced team of research analysts in Hong Kong, London and New York.

We congratulate Mariëtte and Kelly for making the list this year.


Trade Mark Attorney

View Profile


Trade Mark Attorney

View Profile


Wouldn’t it be great to know what makes some small and medium-sized enterprises (SMEs) really successful? What advice do SMEs need when planning a sales and marketing strategy? At what stage should technology be brought into the picture? What about intellectual property issues? And cash-flow management?

These questions and more will be the hot topics at the 2018 Business Day TV SME Summit on March 8 in Parktown, Johannesburg.

Standard BankCredit Guarantee and the South African Institute of Chartered Accountants are the headline partners of this year’s event, which aims to “ignite growth potential” among small-business owners and entrepreneurs. And Adams & Adams joins as a Corporate partner, along with BDOFundingHub and GROW.

The Business Day TV SME Summit provides an opportunity for small-business owners, entrepreneurs, incubators, franchisors, investors and suppliers to the SME sector to come together and engage experts in the fields of business, technology, marketing and investment.

Conference topics include:

  • Reimagine the lightbulb: protecting and leveraging SMEs’ intellectual property in the 21st century | Darren Olivier – Partner, Adams & Adams
  • The importance of cash-flow management for small businesses
  • How an effective sales and marketing strategy can get your business to the next level

The 2018 Business Day TV SME Summit will take place at The Empire Conference & Events Venue in Parktown on March 8.

Tickets are available at R995 excluding VAT. For details, contact Lucy Johnson at or


Trade Mark Attorney

View Profile


A new political party has just emerged in South Africa and it is called the African Democratic Change (ADeC) lead by Dr Makhozi Khoza. Its new logo (above) has caused some outcry and much attention for the new party for obvious reasons.

On the left-hand side is the logo of the ANC and on the right-hand side, that of ADeC. On the face of it there are a number of distinguishing factors; the use of blue, the juxtaposition of the various elements making up the mark and the fact that many of these elements are not uncommon in local political party logos. You can see that in this illustration below:

The use of circles, colour combinations of yellow and green and flames/sun type elements are quite common. One could argue that people/voters are used to these combinations and will focus on other parts of the logos, and not be confused. But is this the end of the matter?

The reality is that there are certain very stark similarities in the logos, especially the use of the black, green and yellow combination in the flame device in the ADeC logo. These colours are identical to the ANC colours (in exact Pantone colour it appears), and also are juxtaposed in the same combination i.e. black, yellow then green. There are other important similarities too; the clenched hand holding a torch & spear, and the circle and wheel device and flag/flame flying concepts.

Passing Off and Trade Mark Infringement

Under South African law it is possible to own rights in colour combinations if one can establish a reputation in them, or if they are registered as such in the colour combination at the national trade mark office. It is almost certain that even if the ANC has not registered the colour combination, that they will be able to establish a reputation in those colours. The question then is whether as a result of that reputation, the use of the combination by ADeC may result in a likelihood of confusion.

Importantly, it is then not the entire ANC logo that is compared with the ADeC logo, but simply the colour combination in which it can show a reputation. One can immediately see then, that arguments for a likelihood of confusion become greater and quite possibly could succeed. This ground is known as passing off.

Under trade mark infringement it really depends on how the mark is registered. If the colour combination is registered then the enquiry is much the same, though it could be more straightforward. If there is found to be use of an identical trade mark for identical services (as covered by the registered trade mark), then there is no need to show a likelihood of confusion, and the ANC would prevail.

Under the Advertising Standards Association Code

This is a code that regulates advertising in South Africa against advertising that is in conflict with the code. The new ADeC logo will qualify as an advert under the code and could be open to an objection by the ANC, if it can show that there is misuse of its advertising goodwill in the colour combination. This enquiry is very similar to the ground of passing off explained above, and if the ANC can show a likelihood of confusion then it will prevail.

However, there is an even stronger potential ground under the code and that is “imitation”. If there is imitation of an advertising concept then, even if there is no likelihood of confusion, the ASA Code could be used to stop advertising with that logo amongst members of the ASA, which include industry bodies regulating print, media and online advertising in the country. This could prove powerful even though the ANC or ADeC are not likely to be members of the ASA – the ASA’s recent ruling in the Herbex case  (on jurisdiction of the ASA and its indirect effect over non members) may come to their aide on this point.

The difficulty with using the code is that political advertising is excluded from the scope of the code. Consequently this forum would only be available in very limited circumstances.

Under the IEC Code

This code is aimed at ensuring free and fair elections in South Africa. The code has specific provisions against “plagiarising other party’s symbols, names and acronyms” and can impose a fine of R200 000 against a wrongdoer. Plagiarism is arguably more difficult to show than imitation and passing off because it implies actual copying, and is more a copyright term. (This is not really a copyright dispute as the colour combination is probably not able to meet the originality threshold for copyright to exist). That said, if one accepts that the colour combination is that of the ANC as an advertising concept or under passing off, then copying of that may sway the decision maker, rendering it plagiarism under the IEC code.

Additional comments

This is not the first time, political parties are having a spat over logos. Indeed the ANC took on COPE in a similar (but different) dispute many years ago as reported on the Afro-IP blog here. Some may well say that this is intentional by ADeC, that the media coverage is well worth the legal risk and it probably is. As mentioned in these posts (here and here) on the new UKIP logo in the UK and the public commentary on the possible furore with the Premier League over logos, it is important for political parties to get proper registered protection for their symbols.

Darren Olivier

(as published on Afro-IP)


Trade Mark Attorney

View Profile


George Scola was a national basketball player and is a genuine all round nice guy. He lead a normal, if not enviable, life until one day in his 30s he was struck down with a stroke. The moment he became disabled is encapsulated by him in this clip here. Today he spends his life dedicated to promoting awareness of stroke. He founded South Africa’s Stoke Survivor Foundation and is a Director of World Stroke Organisation.


Despite these grand titles, his noble cause and his warm personality, George has significant challenges. He is still suffering from his disability which creates a real challenge to getting around, concentrating for long periods and pursuing the cause. Coupled with that he has an annual budget that does not even reach R40k and he is competing with causes in South Africa, like Aids, TB and others that get far more awareness, in a society where none of them get enough.


According to George in his interview below, “stroke is the number one cause of disability throughout the world”.


Today is World Stroke Day and George has come up with the Blue Glove Initiative to promote his work. This involves placing a turquoise medical glove on one’s hand as a reminder not to use it, for a period of time. It will give the person some idea of what it is like to suffer the effects of a debilitating stroke. As 1000 kids at King Edward VII School understood this morning where he launched his campaign; trying to tie a tie with one hand is well nigh, impossible.


“There is urgent need for a campaign like this,” notes George Scola, “as so many misconceptions surround stroke. Some communities still believe stroke is evidence of witchcraft. Others wrongly believe women are immune.” “Awareness is low and information sparse. This must change.”


I would like to encourage everyone to support this initiative. You can do so by simply following  them on twitter @strokesurvivors or the Facebook page Pick up a glove, that is all you need to do but if you want to donate, that would really be appreciated.


Adams & Adams’ IP Live team is delighted to be able to support the initiative by sponsoring legal advice around the concept, and wearing a glove!


Following some 70-plus sets of submissions and a lot of heated debate in Parliament, the decision has apparently been taken to send the Copyright Amendment Bill back to the drawing board, again. Whilst looking better than its predecessor that made its debut in 2015, the 2017 Bill unfortunately also failed to pass muster with words such as ill-considered, nonsensical and ridiculous used to describe its provisions and practical implications. Werina Griffith spoke to the Law Focus team on Voice of Wits about Copyright basics and the Copyright Amendment Bill.


Trade Mark Attorney

View Profile


How a savvy entrepreneur resurrected America’s “original cream-filled chocolate cookie”. As far as podcasts go, NPR’s Planet Money is right up there with the best! Which is why we were doubly delighted to hear an updated episode regarding the resurrection of the Hydrox chocolate cookie which had a strong focus on the nature of trade mark rights.


Trade Mark Attorney

View Profile


Trade Mark Attorney

Send Email


Despacito, Double Bogeys and Dilution all feature in the five most interesting IP stories of July 2017.

1. No Despacito for the Venezuelan President

Earlier this month, the Venezuelan President, Nicolás Maduro, used a remix of the Latin hit Despacito to encourage Venezuelans to vote for the Constituent Assembly, which will have powers to rewrite the national charter and supersede other institutions.

This was not sanctioned by the Puerto Rican singers of the song, Luis Fonsi and Daddy Yankee who released the following statement:

“At no point was I asked, nor did I authorize, the use or the change in lyrics of Despacito for political ambitions, and much less in the middle of a deplorable situation that Venezuela, a country I love so much, is living,” said Luis Fonsi on Twitter.

As the author of the copyrightable works (both musical and literary works in this case), Luis Fonsi has the moral right to protect his work’s integrity. The South African Copyright Act provides that the author of a work may object to any distortion, mutilation or other modification of the work where such action is or would be prejudicial to the honour or reputation of the author and there are analogous laws in many jurisdictions internationally.

“That you illegally appropriate a song (Despacito) does not compare with the crimes you commit and have committed in Venezuela. Your dictatorial regime is a joke, not only for my Venezuelan brothers, but for the entire world,” said Fonsi who left his words un-minced.

Despite the fact that non-Spanish speakers are mangling the lyrics of Despacito on dance floors across the Western world, this is authorised, and even encouraged by Fonsi and Yankee.

Fun fact: Despacito is the first (mostly) Spanish language song to reach number one on the Billboard Hot 100 since 1996’s Macarena and has topped the charts in 45 different countries.

2. Google Escapes Genericide


It’s a dramatic headline, okay. It also has nothing to do with the time my Mom claimed:“I deleted Google”.

The term genericide applies when a trade mark has become the generic name for, or synonymous with, a general class of product or service, usually against the intentions of the trade mark’s owner. The death of several trade marks that have become generic include escalator, thermos and cellophane. Yes, they were all once trade marks that became the generic descriptor of the goods.

Has Google become generic? This Ninth Circuit Court of Appeals in the United States recently said no! The case is discussed in detail on IP Watchdog here.

Brand owners may want to look at the INTA’s Practical Tips on Avoiding Genericide.

3. Rock on! Are hand gestures registrable as trade marks?

Is a hand gesture a trade mark, or can it even be registered as a trade mark? The co-lead singer of the band KISS, Gene Simmons, seemed to think so. He applied to the United States Patent and Trademark Office to register the following hand gesture as a trade mark:


However, Forbes Magazine recently 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.”

Wensel Britz considered what the likely outcome have been had Mr Simmons applied to register the hand gesture in South Africa on the Adams & Adams website. We think that this post will give you some insight into what is registrable as a trade mark.

4. A Double Bogey for Titleist


An interesting trade mark storm is brewing in the United States between the golf brand Titleist and the online retailer I Made Bogey which trades in a number of goods which parody the Titleist brand by using the trade mark Titties – in the famous Titleist font.

The classic trade mark infringement test involves an assessment of whether a consumer will be confused or deceived into thinking that goods emanate from Titleist. Another form of trade mark infringement is known as trade mark dilution which in South Africa protects well-known trade marks from another party taking unfair advantage or use that is detrimental to the distinctive character or repute of the registered trade mark. Importantly, this assessment does not require a likelihood of deception or confusion.

An excerpt from

“In the suit, Titleist claims both trademark infringement and dilution. For dilution to stick, it must show that I Made Bogey’s hats tarnish Titleist’s reputation or blur its fame. For trademark infringement, however, Titleist must show that consumers would be confused by the two logos. ‘They would have to show that people would think Titleist is making hats with the sexually explicit misspelling’, said Tobin, the attorney. And that would be pretty difficult, she said.”

5. Adams & Adams launch the #IPEveningSeries at The Box Shop in Soweto

Darren Olivier introduces the panel.

The IPLive team presented to The Box Shop’s network of passionate entrepreneurs on 27 July 2017 on the key IP considerations vital for entrepreneurs to consider. As well as focusing on the Louis Vuitton Basotho Blanket saga, the team covered the following topics:

How to identify intellectual property (IP)
How to set up a basic IP management structure that grows with your business
How to protect and manage IP cost effectively
How to make IP create value for your business
To see more photos of the event (or even just photos of Darren Olivier’s purple trousers) have a look at the gallery here.

by Nic Rosslee


Trade Mark Attorney

View Profile


Iman Rappetti talks to Partner, Darren Olivier, and Associate, Maureen Makoko, about the upcoming Adams & Adams IP Evening Series, as well as the recent controversy over Basotho designs and well known fashion house Louis Vuitton as a case study.

At a recent IP Evening Series event in Soweto, Darren explained that “fashion and crafts are a vibrant industry amongst entrepreneurs in Africa, and we are taking IP to the former townships to help entrepreneurs cost effectively use IP systems to create value for their creativity“.

In the South African context, we are regularly confronted by examples of what is labelled as “cultural appropriation”. What is cultural appropriation and where is the line between cultural appreciation and cultural appropriation? In a guest post on our IP Live blog site, Myriam Christmann introduces us to the concept and provides an explanation of why cultural appropriation sits uncomfortably with many of us. Click HERE to read the post.


Trade Mark Attorney

View Profile


Trade Mark Attorney

Send Email


Hand gestures are a part of everyday life of a large number of cultures and civilizations. People use them to indicate approval, disapproval, pleasure or displeasure with something or someone. It is a shorthand method of communicating.

Is a hand gesture a trade mark, or can it even be registered as a trade mark? The co-lead singer of the band KISS, Gene Simmons, seemed to think so. He recently applied to the United States Patent and Trademark Office to register the following hand gesture as a trade mark:

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:

The hand gesture is incorporated in their logo, though they have not registered it separately as a gesture mark.

The hand gesture has become so ingrained in their business that their fans have even started indicating their allegiance to the team by using the hand gesture. When one goes to a soccer match and a supporter uses this gesture, other soccer supporters will immediately know which team the person supports. The players of the Mamelodi Sundowns team even use the hand gesture.

The Orlando Pirates soccer team supporters use two crossed forearms held at head height.

These gestures have become distinctive of those two teams and should be considered sufficiently distinctive to be registrable as trade marks.

Although not a legitimate business, gang members often use hand signs to indicate affiliation to a particular gang.

Hand gestures, however, run the same risk as all other trade marks, namely dilution or genericide.  In an era of social media trends (COVFEFE!), the risk of a specific hand gesture quickly becoming common in the relevant industry, if not policed properly, is ever present.

The devil’s horns hand gesture is one such gesture that has been used through the ages by a wide variety of rock stars. It is a gesture synonymous with music of a certain genre. Fans of all rock stars use the symbol. It is not peculiar to one.

A similar problem now exists with the “hand heart” gesture used by many public figures.

The heart hand gesture is claimed to have been first used by Armin van Buuren, and to later also be used by various other famous musicians.

So too, the fate of the devil’s horns gesture. Even if Mr Simmons was the first to use the sign, as claimed by him, the sign is no longer indicative of him or of his business. Amd had Mr Simmons applied to register the hand gesture in South Africa, the application would in all likelihood be refused registration based on a lack of distinctiveness, or if it proceed to registration, be liable to cancellation.

The take home lesson for businesses is that hand gestures are novel types of symbols that they could adopt as part of their corporate identity. Admittedly, hand gestures are not equally suitable for all businesses, but they may carry significant commercial value for some. Our world is constantly evolving, why shouldn’t our marketing strategies also evolve?

It would be possible to register such signs as trade marks, but those gestures must not be common in the relevant trade and considerable consumer education will first need to take place. Once registered, businesses would then have to strictly police the unauthorized use of such hand gestures to avoid them becoming generic, and losing distinctiveness.



Senior Associate
Trade Mark Attorney

View Profile


Covfefe, The Slants, The Jenners and Fidget Spinners – all in a one month’s IP round-up! We’re always interested in the latest IP Hot Topics at IP Live. Here are five of the most interesting IP matters that piqued our interest in June 2017.


Is Covfefe registrable as a trade mark? (via IPKat

When Donald Trump tweeted “Despite the constant negative press covfefe” the internet almost broke. We were interested to see trade mark applications in the US and UK for the word “covfefe” which prompted the discussion “Is covfefe registrable as a trade mark?”

In our view COVFEFE would be registrable in South Africa as it is an original, distinctive mark. Although Donald Trump coined the phrase, he has not used the mark as a trade mark and it is unlikely that he wall, sorry will.

However it may be too late to file the mark in South Africa as the foreign proprietor of the mark could use their foreign filing dates to claim priority in South Africa, provided the South African application is filed within the prescribed six-month period.

It is worth looking at the IPKat analysis further here.


Offensive and disparaging marks are registrable in the USA (via NPR)

A US Punk Rock named The Slants were originally unable to register a trade mark for its name due to the Lanham Act which prohibits any trademark that could “disparage … or bring … into contempt or disrepute any persons, living or dead…” The Supreme Court of the United States earlier this month held that the law prohibiting the registration of offensive and disparaging trade marks is against free speech rights.

The term ‘slants’ is a disparaging term for Asian-Americans in the United States which is something the band wanted to turn around into something positive as they were Asian-Americans:

“We grew up and the notion of having slanted eyes was always considered a negative thing, kids would pull their eyes back in a slant-eyed gesture to make fun of us. … I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.” said Simon Tam from The Slants.

It’s definitely a victory for free speech. You can read a more detailed take on offensive trade marks in this Adams & Adams Post


The SPECIAL K: Kellogg v Thanasi Kokkinakis (via The Guardian)

An interesting IP dispute is brewing in Australia where Kellogg has taken exception to tennis player Thanasi Kokkinakis trying to commercially leverage his nickname “Special K” by launching a sports brand trading in clothing and tennis wear. This is an interesting matter as SPECIAL K is protecting its status as an internationally well-known trade mark.

The test for primary trade mark infringement involves a consideration of whether the unauthorised use of a registered mark is likely to deceive or cause confusion among consumers. This matter is different – as there is unlikely to be confusion due to the stark differences between the goods – and in South Africa would be argued under the provision in the Trade Marks Act, 1993 which protects against what is referred to as trade mark dilution (Section 34(1)(c). Trade mark dilution involves a consideration of whether the unauthorised use of the mark takes unfair advantage or is detrimental to the distinctive character of a trade mark.

The classic quote on trade mark dilution comes from US Scholar, Frank Isaac Scheckter who argued that:

“If you allow Rolls Royce restaurants, and Rolls Royce cafeterias, and Rolls Royce pants, and Rolls Royce candy, in 10 years you will not have the Rolls Royce mark anymore.”

The approach from Kellogg here is spot-on. Trade mark proprietors ought to be on the look-out for copy-cats adopting your trade mark, even if the mark is not being used for goods or services that you trade in.


IP Lessons from the fidget spinner (via IP Live)

With the fidget spinner craze taking over playgrounds and offices around the world, we were interested in learning from the Guardian that the inventor of the fidget spinner, Catherine Hettinger, barely made a dime from her invention.

While Ms Hettinger held a US patent for the invention from 1997 to 2005, she abandoned it after she could not afford the renewal fees.

There are a number of IP lessons that one can learn from the fidget spinner, we did a post here on the IP Live blog which you should read.


Kendall and Kylie Jenner pull t-shirt line after receiving legal threats (via The Guardian)

The Jenner sisters brought out a t-shirt line where they super-imposed their faces onto images of famous icons such as the Notorious B.I.G. and Tupac Shakur. This is clearly a flagrant copyright infringement against the owner of the copyright in the photographs but also a violation of the image rights of these artists which belong to their estates.

The t-shirts have been withdrawn from the market and the sisters’ joint statement reads:

“These designs were not well thought out and we deeply apologise to anyone that has been upset and/or offended, especially to the families of the artists. We are huge fans of their music and it was not our intention to disrespect these cultural icons in any way.”

Instagram post by Voletta Wallace, Notorious B.I.G.’s mom (also known as Ms. B.I.G.)

Instagram post by Voletta Wallace, Notorious B.I.G.’s mom (also known as Ms. B.I.G.)

That’s it for June folks!

Feel free to send your IP stories to


Trade Mark Attorney

View Profile


Africa needs to develop small and medium sized businesses across the continent. A good vehicle to adopt to substantially contribute towards this initiative, is franchising. This includes adopting successful and appropriate business systems and prudently locating them, so as to as far as possible ensure their success.

The plan should commence with a study of franchising and small business activity, as well as the potential for franchising, by franchise experts, in the relevant country or region. Once the status quo, commencement point, possible supportive regulatory framework and franchise business potential has been determined, a plan should be created to develop and support franchising, small and medium size business development.

It is suggested that a full business concept franchise model be adopted. From a legal perspective this essentially includes, the licensing of intellectual property, usually primarily trade marks, copyright and knowhow, as well as a full business system, by the franchisor to the franchisee, in return for some sort of remuneration and subject to compliance with required standards, the business model and quality control.

Although quality standards and strict compliance with the business system, are onerous to a franchisee, this usually ensures the sustainability and viability of the franchise business, on an ongoing basis. The usual benefits include comprehensive initial training and establishment support, the use of a refined business system and the right to use a trade mark and brand, which enjoys considerable goodwill.

It is to be noted that a pure distributorship agreement, agency agreements, multi-level marketing agreements, also known as network marketing, and pyramid schemes, are not franchise arrangements.

Cognisance should be taken of the franchise industry in South Africa, which is the most developed on the continent, with over 757 franchise systems which include around 35 000 business outlets and offers direct employment to around R330 000 people. These figures exclude a number of franchise systems such as motor vehicle and equipment dealerships, motor vehicle and equipment rental, fuel and service stations, hotels and a number of other businesses, which are franchise systems, but not always viewed as such.

The franchise laws and regulatory framework in South Africa can be used as a basis for consideration. This includes the Consumer Protection Act (CPA) which includes, inter alia, Regulations 2 and 3. Regulation 2 sets out what must be dealt with and included in a Franchise Agreement and Regulation 3 sets out the contents of a disclosure document, which must be given to a prospective franchisee, at least 14 days in advance of signing a Franchise Agreement. Regulation 2 attempts to include the best practices and requirements, relating to Franchise Agreements in such documents.

Pre-contractual disclosure of material issues includes the details of the franchisor, the business system, the expenses and income of a typical franchised business, the costs of the investment, establishment, set up, training and related expenses, as well as the likely working capital and estimated break-even point, as well as all other relevant information, so as to place the prospective franchisee in a position where they are able to properly assess the business to be invested into.

The spirit and intention of the CPA is to provide franchisees with consumer type rights including equality, choice, information, honest dealing, fair value, good quality, safety, privacy, fair and responsible marketing and supplier accountability. The CPA also strives towards reasonableness, equity and no unjust prices.

If at all possible an independent or government and business driven franchise association should be developed and supported, so as to promote ethical and best practice franchising, as well as of course to educate and increase the awareness and benefits, as well as possible pitfalls of franchising.

Franchise education and training are also key elements to develop an awareness and an understanding of franchising and to assist with the development of prospective franchise systems.

In addition to the legal and regulatory frame work, the Franchise Association of South Africa (FASA) has over more than 35 years promoted ethical franchising and best franchising practices. This has substantially supported and assisted with the development of franchising in South Africa and their Code of Ethics and Business Protections, is recommended for consideration.

FASA has also assisted with the establishment of the Pan African Franchise Association (PAFF). It is intended that the members of PAFF will be franchise associations in African countries. The development and establishment of franchise associations in other African countries has been slow and consequently PAFF development has been slow. There are however various PAFF initiatives to develop and support ethical and best franchising practices on the African continent.

So as to support franchising and small business development, various government initiatives should be implemented to support, empower, develop and finance, small, medium and franchised businesses. Miro and social franchising also have a great deal of potential and wherever possible and appropriate, should be considered. A micro franchisor development program should certainly be looked at and considered very carefully.

The protection of intellectual property is a key aspect for investors and franchisors granting the use of their valuable trade marks, copyright, knowhow and business systems, into the African business landscape. Although there are in many instances sufficient intellectual property laws to protect franchisors and investors, the registration and enforcement processes and practices of the intellectual property is usually a lengthy and very drawn out process and can be fraught with difficulties, to the substantial detriment and discouragement of franchisors and investors.

In addition to creating support mechanisms and facilitating the access to funding, entrepreneurship and franchising development, should also be promoted. Best practices and ethical franchising should be encouraged, developed and maintained on an ongoing basis by establishing and maintaining a supportive legal and commercial frame work, keeping up with international trends, attracting required and appropriate franchise systems and business concepts and at all times supporting small and medium sized business development.

Wherever the aforegoing have been promoted, supported and pursued, franchising has thrived, leading to the substantial development of sustainable small and medium sized businesses. Further, as the development, awareness and knowledge of the franchise concept and business model grows and develops, this provides fertile ground for local competitors and entrepreneurs to develop similar and competing businesses, which may then potentially allow those business owners to become franchisors, and if successful, to franchise their brands and business systems, to other aspiring entrepreneurs locally and internationally, leading to economic development and increased employment.

The time is therefore ripe for African governments and businesses to carefully consider this massive opportunity and to take steps along the lines of those suggested above. There is no need to re-invent the wheel. The franchise industry is already well developed in South Africa and in certain African countries, as well as internationally. It is simply the opportunity of making this a priority and then pursuing and supporting best franchise business practices and ethical franchising.



View Profile