DR SAMANTHA GREGORY ATTORNEYS                        PATENTLY DIFFERENT  ®     
                               Intellectual Property Law Specialists                               
  • Dear Reader,

    The Intellectual property world, as we know it, is clearly changing. 

    Turning to local law, in particular the TRADE MARKS ACT NO. 194 OF 1993, more particularly to Section 10 (12) dealing with unregistrable trade marks. 

    This Act states: 

    “a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons” 

    The Supreme Court in the United States recently ruled that the law prohibiting the registration of offensive and disparaging trade marks is against free speech rights. 

    The case in question, involved the attempt to register the mark “SLANTS” by Asian-American band member Simon Tam. It was rejected originally by the USPTO.  The appeal court however found that original decision to be unconstitutional and the Supreme Court has now agreed with the appeal court. 

    The US Supreme Court judges 1 held that :

    "A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all,"

    "Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express the thought we hate"

    Turning to South Africa, said Registry ruled against the registration of “BUM” for shirts in 1970 on such grounds and the irritation of US counsel makes amusing reading, said counsel wrote:

    "fear(s) very strongly for the intellectual level of (the) South Afrikaner" and describes the Registrar at the time as having "not yet climbed out of the slime in which he was spawned".
     

    Obviously, the world moved along since 1970, including South Africa, however with South Africa’s polarized past, it is the writer’s opinion that a large degree of conservatism will and probably should still prevail, in particular when said free speech is directed to “race, ethnicity, and gender”. 

    AJ Rabie

    Registered Patent Attorney  

    Footnote: 

    Reference 1: MATAL, INTERIM DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE v. TAM SUPREME COURT OF THE UNITED STATES, OCTOBER 2016

     https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf

 

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