Kulula's proposed new livery has raised a few eyebrows. If you haven’t seen it, it consists of a green plane (no change there), the name Kulula.com close to the tail (in a smaller script than before), a tail that’s clearly inspired by and derived from the South African flag (it’s much closer to the flag than SAA’s tail), and, most controversially, the following wording near the front of the plane:

The Most

SOUTH AFRICAN

Airways

(The words ‘SOUTH AFRICAN’ are far more prominent than the others, and they appear in roughly the same place where those very words appear on SAA’s planes).

A fairly aggressive move, given that Kulula has also gone to court over the legality of SAA’s bail-out. But a move that has, I suspect, been considered very carefully. This is what a Kulula spokesperson had to say: ‘We thought long and hard about a slogan that truly represents who we are as an airline and communicates our passion for South African travel, and this was the most fitting.’ Media 24, on the other hand, reported on the matter in these terms: ‘Kulula has all but hijacked South African Airways’ (SAA) recognisable branding for the proposed livery of their Boeing 737-800 fleet.

So just what are the trade mark implications of this, bearing in mind that copying is not necessarily illegal? SOUTH AFRICAN AIRWAYS is a very descriptive trade mark and descriptive trade marks are difficult to register, for the simple reason that they should be available to all. Yet descriptive trade marks can be registered if they have in fact become distinctive of one company – this might happen if it has been used by one company for many years. There’s no doubt that SOUTH AFRICAN AIRWAYS falls into that category, especially if one bears in mind that there are a relatively small number of players in the airline industry. So it’s very likely that the trade mark SOUTH AFRICAN AIRWAYS is registered for airline services. But does that mean that SAA can stop Kulula using the slogan 'The Most South African Airways'?

Probably not. For starters, it’s quite clear that a trade mark registration is only infringed if it’s used as a trade mark. Kulula will no doubt argue that it’s using the term The Most South African Airways in a descriptive or non-trade mark manner, as part of a slogan and as a genuine description of the characteristics of its services. Even if that argument fails, Kulula will argue that there’s no likelihood of confusion. It will argue that a mark which is descriptive but gets registered because it has become distinctive is always weak and difficult to enforce. Kulula will argue that a registration for SOUTH AFRICAN AIRWAYS certainly does not confer a monopoly on the term ‘South African’. And it will argue that the court must always consider the likely consumer, pointing to the fact that consumers of airline tickets are more sophisticated and savvy than consumers of everyday goods like groceries - it is for this reason that, although the names Tazz and Jazz might be confused in some product categories, they won’t be confused in the case of cars, because people think long and hard before buying cars.

SAA may then argue that, even if there’s no likelihood of confusion, its well-known trade mark is being diluted. But that argument’s unlikely to succeed because the concept of dilution of well-known brands has been pretty much dead in the water ever since the Constitutional Court dismissed SAB’s dilution claim against Justin Nurse for his Carling Black Labour t-shirts, holding that there had to be a real prospect of economic loss.

As for the airplane tail, it’s possible that SAA has a trade mark registration for its tail design. But Kulula's tail is, in my view, not so similar that it will be held to be an infringement. On top of that, Kulula will no doubt argue that its tail is simply an indication of the airline's nationality and an expression of patriotism.

Which leaves SAA with an action for passing off. I think that SAA’s chances may be slightly better here because the overall effect will then be taken into account. SAA would argue that, as a result of the goodwill or reputation that attaches to its livery, people seeing Kulula's planes might wonder if there’s some connection between the companies, some sort of commercial arrangement. After all, co-branding and code-sharing arrangements are not uncommon in the airline industry. And it is, of course, very well-known that Kulula has a connection with British Airways – Kulula’s holding company, Comair, operates British Airways in South Africa under a franchise arrangement.

It will be fascinating to see what, if anything, SAA does about this. Perhaps it will simply take the view that imitation is the sincerest form of flattery!