The First Amendment to the Constitution of the United States of America protects the right to free speech. In South Africa this right is enshrined as a basic human right in the Constitution’s Bill of Rights. But how does one balance the right to free speech with trade mark principles and intellectual property rights?

Unites States trade mark laws and regulations prohibit the registration of “disparaging” or “immoral” trade marks. The South African Trade Marks Act contains similar provisions and prohibits the registration of a mark which is likely to be contra bonos mores or likely to give offence to any class of person.

In the past the United States Patent and Trademarks Office (USPTO) has refused to register marks that it viewed as “immoral” such as “2 DYKE MINIMUM”, “CHRISTIAN PROSTITUTE” and “STOP THE ISLAMIZATION OF AMERICA”.

In what seems to be a complete turnaround the U.S. Federal Circuit Court of Appeals in Washington recently held that the USPTO was wrong to refuse an application by an Asian-American dance-rock band to register the name of their band, “THE SLANTS”, as a trade mark. Although U.S. intellectual property scholars anticipate that the ruling will be appealed, they have observed that this decision may well result in the USPTO being forced to allow the registration of seemingly offensive trade marks.

In South Africa, in the recent highly publicised case of Economic Freedom Fighters v Speaker of the National Assembly and Others; Democratic Alliance v Speaker of the National Assembly and Others concerning President Zuma’s controversial upgrades to his Nkandla homestead, the Constitutional Court stated once again, in no uncertain terms, that the Constitution is the supreme law of the country.

It’s not that this was a grey area before the Constitutional Court handed down judgment in this case, but the fact that the principle has been so vehemently reaffirmed may prompt IP lawyers in South Africa to question whether, in the context of trade mark law, the South African courts will follow a similar path to that recently blazed by the U.S. Federal Circuit Court of Appeals in case concerning “THE SLANTS” trade mark. Does it mean that there is room to argue that a person’s right to freedom of speech outweighs the Trade Marks Act’s prohibition on registration of offensive trade marks?

The South African Trade Marks Office has, in the past, been persuaded to register potentially offensive trade marks, such as “FAT BASTARD” in class 33 in relation to wine and other alcoholic beverages. While the term “fat bastard” is arguably offensive to obese people and possibly certain other classes of people, it is also used to refer to a particularly full-bodied wine and the Registrar was ultimately persuaded by this argument.

It must also be borne in mind that trade marks are territorial in nature and something that is considered to be offensive in one jurisdiction may not be offensive in another. For example, “THE SLANTS” itself would probably not be considered to be offensive in South Africa, but one of Australia’s most popular cheese brands, “COON CHEESE”, whilst registered, and apparently not offensive, in Australia, could well be argued to be likely to give offense to a particular class or classes of person in South Africa.

Of course the concept of balancing the right to freedom of expression with trade mark principles and intellectual property rights is not a new one. Over 10 years ago the Constitutional Court in South Africa made it clear that the right to freedom of expressional must be taken into account, saying, in the case of Laugh-it-Off Promotions CC v South African Breweries in 2005, that “…all speech is protected and must be appropriately balanced against other rights of which the right to property (including intellectual property) is one.”. Although the court was not required to pronounce on the registrability or otherwise of a potentially offensive trade mark, the notion that freedom of speech is applicable in the context of intellectual property rights was clearly stated.

In my view it is unlikely that South African courts would be persuaded that the Constitutionally enshrined right to freedom of speech outweighs the Trade Marks Act’s prohibition against registration of offensive trade marks to the extent that the Trade Marks Office would be compelled to register an overtly racially offensive trade mark (for example), particularly in light of the country’s history, but it will be interesting to see how Constitutional rights are balanced against trade mark laws and intellectual property rights in this country going forward.