Can only Cassper #FillUp or is it patent nonsense? The experts ...

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Can only Cassper #FillUp or is it patent nonsense? The experts explain

As Nyovest locks legal horns with rival musician who used his catchphrase, we look at trademark law to see who'll win

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He may not own “#FillUp” just yet, but when he does, rapper Cassper Nyovest can claim damages dating back to when he first launched his application.
The hip hop artist recently raised eyebrows when he called out a Tsonga musician for using the term “#FillUp” for a show at Giyani Stadium.
Nyovest, whose real name is Refiloe Phoolo, started using the #FillUp term in 2015 when he filled the Ticket Pro Dome in Johannesburg’s NorthGate with 20,000 people, and then he filled Orlando Stadium in 2016 with 40,000 fans. Last year, he performed for 68,000 people at FNB Stadium and this year wants to fill up Durban’s Moses Mabhida Stadium.
His marketing for these performances was built around a #FillUp campaign, urging fans to help him fill up the stadiums.
But then Tsonga artist Benny “President” Mayengani used the phrase in the build-up to his concert in Giyani.
Nyovest was quick to point out that the #FillUp term was his and his alone. He claims #FillUp is his registered trademark and has warned other artists not to use it.
Nyovest’s team has served Mayengani with a notice to stop using the phrase, saying it is a trademark infringement. 
But trademark attorneys told Times Select an application to have a trademark registered did not mean it had been approved.
This means that an official action was issued by the office of the Companies and Intellectual Properties Commission (CIPC), setting out certain conditions to be complied with in order for the application to proceed to acceptance.
Carl van Rooyen, a partner at Spoor & Fisher who specialises in trademarks, copyright and unlawful competition, said that while there was no way to determine the value of the phrase, the rapper had a legitimate case once it was registered.
Nyovest may have an arguable case of trademark infringement once it is registered.
“While it is so that his trademark application is still pending, once it proceeds to registration it will be backdated to the filing date, which is 2016. While the horse has bolted, so to speak, with regards to an interdict, he might still be entitled to claim damages from the other party. In this regard, the Trade Marks Act states that in lieu of actual damages one can also claim damages based on a reasonable royalty basis,” Van Rooyen said.
According to Fleurette Coetzee, the head of the CIPC’s trademarks division, Nyovest applied to have the phrase “#FillUp” registered on November 16 2016 and the application has been “accepted with conditions”.
“This means that an official action was issued by this office setting out certain conditions to be complied with in order for the application to proceed to acceptance. This application has thus not yet been accepted, nor has it proceeded to registration,” Coetzee said.
ENSafrica senior associate Gerard du Toit said once a trademark has been registered you can rely on the trademark infringement provisions of the Trade Mark Act.
Typically, a letter of demand will be sent to the infringer, insisting they stop using it. Only if the letter does not have the desired effect would a complainant take the matter to court. If the trademark is not registered they can bring an application based on the legal concept of passing off. Again, a letter of demand will usually be sent, and the matter will only go to court if the letter does not have the desired effect.
“Cassper Nyovest will not be able to rely on trademark infringement as he simply does not have a registered trademark. If he were to rely on passing off, he would have to convince a court that he has reputation in the trademark #FILLUP in relation to the arranging of music concerts/events. He would then need to show that a third party has used his trademark, without his permission, in such a way that there is a likelihood that persons seeing that use would associate it with him,” Du Toit said.
“In other words, would people think that #FILLUPGIYANISTADIUM is linked to, or endorsed by Cassper Nyovest? Lastly, he would have to show that he has suffered harm. If he succeeds in proving the first two points, then it would ordinarily follow that he would be able to sustain the third point.”
Specialist trademark attorney Noëlle Pearson from Smit & Van Wyk, a patent, trademark and copyright firm, said for Nyovest to be entitled to a remedy his trademark must be officially registered.
It was standard procedure for a trademark application to be accepted with conditions. In this case the pending trademark was submitted for registration in three classes or categories – clothing, advertising and retail and entertainment – which would be the Fill Up concerts.
“It’s very normal for the registrar to accept a trademark with conditions. In this case the registrar has asked for trademarks to be linked and can’t be registered separately as not to confuse the public. It’s a standard condition. The registrar has also asked him to explain the hashtag device because no one should have exclusive rights to a hashtag,” Pearson said.
While he cannot rely on a pending application, once the phrase is registered he can either claim for damages or royalties.
Next, the trademark will be published for three months, where the public can oppose the application.
“He’s already passed the first major hurdle, but a third party may still oppose the trademark. So it’s a bit of a waiting game at this stage,” Pearson added.
Putting stock in trade
It’s not uncommon for those in the entertainment industry to register either names or phrases as trademarks, both locally and internationally.
In SA that process takes between two to three years, but lawyers have described it as “extremely important”.
“It is certainly common internationally for people in the entertainment industry to register their names as trademarks. (Think, for example, of the Kardashians.)  It is not that common in South Africa, primarily I think because many South African artists are not au fait with intellectual property and it might also be a cost issue,” van Rooyen said.
Other cases:
• In Laugh It Off Promotions v South African Breweries, the South African Constitutional Court was required to determine whether the use by Laugh It Off of BLACK LABOUR together with slogans such as “Africa, Lusty, Lively, Exploitation” on T-shirts infringed on SAB’s well-known registered BLACK LABEL and AMERICA’S LUSTY, LIVELY BEER trade marks.  The case is a bit technical since it involves a well-known trademark, but the long and the short is that the Constitutional Court came to the conclusion that, against the background that there is no consumer deception or confusion, the real question is whether SAB would suffer damages as a result of this use by Laugh It Off of these well-known trademarks. The court came to the conclusion that there was no evidence that SAB would suffer damages, and therefore found that the use by Laugh It Off did not constitute trademark infringement.
• Dinnermates (TVL) CC v Piquante Brands International & Another: Piquante, which owned the Peppadew trademark, turned to the court in 2014 to oppose Dinnermates’ application to register the trademark for its peppers called Peppamate. But last year the Supreme Court of Appeal ruled in favour of Dinnermate, saying a monopoly on the word “peppa” could not be granted because that would imperil pepperoni, pepper sauce, and even peppermint.

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