SA trademark department weighs in on ‘Black Lives Matter’ trademarking

A businessman from the United Kingdom (UK) applied to trademark “Black Lives Matter” and “I Can’t Breathe” at the United Kingdom Intellectual Property Office (UKIPO) early this month and the South African trademark department has weighed in on why this is being done.

Udi Pillay, senior associate and attorney at Adams and Adams, said the UK businessman, Georgios Demetriou, wanted to trademark the phrases for various clothing goods.

Protests have been seen around the world regarding the murder of George Floyd and against racism. Pillay said Demetriou wanted to use the final words of Floyd, “I can’t breathe” for a wider range of goods, classes, including fundraising for charity, charity wristbands, and articles of clothing.

“The applicant indicated that his intention is to secure the trademarks and to launch a non-profit organisation to help disadvantaged children. If the trademarks proceed to grant, he wishes to seek a royalty fee from other entities that wish to use the phrases in the UK.”

Pillay explained that the common understanding is that a trademark is defined as distinguishing one entity’s business from another.

“The same must serve as a badge of origin. It is suggested that the phrase ‘Black Lives Matter’ does not fall into the above definition.

“In this regard, it is believed that that phrase does not serve as a badge of origin to any particular entity, but is a social and campaigning movement and not viewed by others as a brand.”

Demetriou is not the first person to attempt to trademark the phrases. The World Trade Mark Review said they had received a number of trademark applications filed in Europe, the UK, and in the United States.

The filings have been widely criticised and Pillay said they arguably have been made in bad faith and is contrary to public morality.

She said there had been no indication of any application to register the phrases in South Africa, and the likelihood of a successful application is slim.

“Section 10(12) of the Trade Marks Act prohibits the registration of a mark of which the use would be contra bonos mores (contrary to public policy or morals) or likely give offense to any class of persons.”

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