Fast food chain, Chicken Licken, recently obtained an interim interdict in the KZN High Court against a competitor called Big Jo’s. The order required Big Jo’s to stop using the term Hot Wings for one of its menu items. Chicken Licken claimed that it has trade mark rights to Hot Wings, having used the term for many years, and having registered it as a trade mark. In its court papers Chicken Licken claimed that the use of the term Hot Wings by Big Jo’s gave it ‘a tremendous springboard into the market place’, with the result that Big Jo’s ‘start out not on the first rung of the ladder, as everyone else has done, but halfway up, riding on our coat-tails’. It seems that Big Jo’s did try to avoid legal proceedings by offering to change the name of its menu item from Hot Wings to Shisa Wings, but that Chicken Licken turned this offer down. Why? Because ‘shisa’ is the Zulu word for ‘hot’.
The case highlights some interesting aspects of trade mark law. It highlights the fact that it is sometimes possible to get trade mark rights to a perfectly ordinary word or term, for example one that simply describes the product – Hot Wings is, of course, pretty descriptive of a type of chicken fast food. Every trade mark lawyer will tell you that you should use a distinctive word or term as a trade mark rather than a descriptive one, and this is good advice because it is very difficult to get any sort of exclusivity to something that is descriptive of the product. Yet, a word or term that is descriptive of the product, or is in some other way non-distinctive (perhaps because it’s a laudatory word or a geographical name), can become distinctive of a single company or product over time if it is used on a considerable scale. A word or term that has become distinctive through use can in certain cases be registered, and it can in certain cases also form the basis of a successful passing off claim. An example might be South African Airways, which is totally descriptive of the service, but which has in fact become distinctive of one company and which could, in my view, be enforced against third parties.
Adopting a descriptive or otherwise weak trade mark rather than a distinctive one is, however, a risky game to play. First, it can take many years to reach a stage of acquired distinctiveness and during this period there is no protection. Second, there’s no guarantee that a court will agree with your assessment that your mark has become distinctive through use - courts have, by way of example, held that Lotto was not a valid trade mark for lottery services (descriptive), that Premier was not a valid trade mark for banking services (laudatory), and that Century City was not a valid trade mark for retail services (geographical). Third, even if you do get registration or judicial recognition of distinctiveness, your rights may in fact be very limited, and quite possibly restricted to the exact word or term. Finally, if your trade mark is descriptive there’s every chance that you’ll be faced with a defence that’s specifically provided for in the Trade Marks Act, and which goes like this: we aren’t using the word or term that you’ve registered as a trade mark, but simply as a way of describing the product. In this case it would involve Big Jo’s claiming that its use of Hot Wings was simply a way of describing its spicy chicken wing product.
The case also highlights that something as little as the name of a menu item can enjoy trade mark rights. The name of a menu item is a kind of sub brand, and comparable examples might be McDonalds’ Big Mac or McFlurry, and KFC’s Rounder. Names like these are undoubtedly associated with the chains that offer the products. Trade mark law is essentially about avoiding consumer confusion and, in its court papers, Chicken Licken said this: ‘As each day goes by, it is more and more likely that members of the public will associate Big Jo’s with Chicken Licken.’ It’s quite conceivable that consumers knowing Chicken Licken’s Hot Wings might assume that Big Jo’s Hot Wings is the same thing, or that there is some sort of connection between the two chains, perhaps through franchising or co-branding. All that’s necessary in cases like this is to show that a significant number of people might wonder whether there is some connection.
Lastly, the case highlights a trade mark issue that arises in a multilingual country like ours. Chicken Licken refused Big Jo’s offer to change the name from Hot Wings to Shisa Wings because much of its clientele in KZN is Zulu speaking. A translation of a registered trade mark can, in certain cases, infringe the registration, and in my view Shisa Wings would be an infringement of Hot Wings. There have been cases on this point in South Africa: in a case involving the magazine trade mark Getaway, a court held that the use of the Afrikaans translation Wegbreek was an infringement; in another case involving the wine trade mark Chameleon, a court held that use of Lovane (derived from ‘ulovane’, the Xhosa word for ‘chameleon’) was not an infringement. The cases are not easy to reconcile, but there is no doubt that translations are something that you need to consider when adopting a trade mark.
A whole lot of trade mark law in one little case!