On August 12, 2012, the inaugural World Elephant Day was launched to bring attention to the urgent plight of Asian and African elephants. The escalation of poaching, habitat loss, human-elephant conflict and mistreatment in captivity are just some of the threats to both African and Asian elephants. Here in Kenya, this blogger recently came across a creative elephant conservation effort dubbed “Save Our Heritage Campaign” spearheaded by a local design agency, Brand2D. Through creative and thought-provoking posters, this anti-poaching campaign is aimed at raising awareness on the effects of poaching. (Read more on #SaveOurHeritageKE via twitter and facebook).
From an intellectual property (IP) perspective, this campaign is interesting because some of the posters distort several registered marks in Kenya including Tusker Lager, Tuskys Supermarkets and Nakumatt. Take for instance, the campaign poster pictured above inspired by the Tusker Lager trade mark but in which the iconic elephant head has been replaced by the image of a poacher and the slogan “TUSKER Baada ya Kazi” replaced with “POACHED Badala ya Kazi”.
Another notable example is the poster based on the Tuskys Supermarkets trade mark. This mark is made up of the word “TUSKYS” whereby the letter “T” is shaped by a protruding white elephant tusk along with the slogan “Pay less, get more, Everyday”. In the campaign poster, the tusk has been replaced with an axe and the mark has been altered to read: “POACHED” and the slogan now reads, “You say less, we hunt more, Everyday”.
In support of their posters, Brand2D have explained the choice of the trade marks used as follows:
If we don’t act now we might lose the inspiration behind the big brands we love…Imagine brands losing the finest form of art that comes from our dearest elephants in which we all take pride in.
All of this begs the question: Are these posters and others of a similar nature an infringement of trade marks?
The traditional concept of infringement is that of one person using the mark of another, without permission, to identify one’s own goods or services. According to section 7(1)(d) of the Trade Marks Act, the rights acquired by the registration of a trademark are infringed by the unauthorised use of a mark similar or identical to that of a trade mark proprietor and that it is in such manner as to render the use of the mark likely to “cause injury or prejudice to the proprietor”. This blogger submits that section 7(1)(d) of the Act is Kenya’s anti-dilution provision.
In the present case, one may argue that the campaign amounts to a form of dilution known as dilution by tarnishment, where unfavourable associations are created between a well known registered mark and the mark of the unauthorised user, the object of the protection, being the repute, the good selling name of the mark. In the celebrated South African case of Laugh It Off Promotions CC v South African Breweries, the Constitutional Court pointed out that the purpose of the dilution provision is to protect the commercial interests of the proprietor of a well-known registered trade mark by prohibiting use which, although not giving rise to confusion or deception, still materially undermines the repute of the mark. In a claim of dilution by tarnishment, any detriment relied on by the trade-mark proprietor must be unfair. Also, it must be substantial in the sense that it must be likely to cause substantial harm to the uniqueness and repute of the mark. The likely detriment must amount to material harm in the commercial sense, that is economic and trade harm.
From the Campaign’s point of view, the Trade Marks Act is clear that the infringing use must be unauthorised. Therefore the consent of the proprietor is a good defence to an infringement action as provided in section 7(3) of the Trade Marks Act. In this connection, this blogger has searched high and low for any official press statement or other public document proving that both East African Breweries and Tuskys have consented to the use of their trade marks in this campaign and that they have pledged support for this campaign.