Legislation to prohibit the use of trademarks on tobacco products is unconstitutional and will make no contribution to discouraging smoking, says Stellenbosch University’s Professor Owen Dean.
Dean, of the Faculty of Law at Stellenbosch University, said in his inaugural lecture in the Jannasch Hall of SU’s Conservatorium recently that many countries, including South Africa, intend adopting legislation restricting or prohibiting the use of logos on cigarette packs, while only allowing brand names or product names, depicted in a plain manner, to be displayed.
But, he argued, such legislation infringes both sections 25(1) and (2) of the Constitution because it will bring about an arbitrary deprivation of property, in the form of trademarks, and indeed an expropriation of such property.
Dean pointed out that since trademarks are assets of a business, they can be regarded as property, and that this had received recognition by the court. “Preventing a trademark from being used leads to it being extinguished and this amounts to the destruction of an item of property,” he said.
According to Dean, the use of trademarks in relation to particular goods or services is the lifeblood of such trademarks. “They are commercial assets of considerable value. Legal protection of trademarks is essential if brands are to serve their purpose and fulfil their economic function,” he said.
In this regard, Dean referred to the trademark Dunhill, and said Dunhill Tobacco of London Limited has a large number of pictorial registered trademarks in South Africa consisting of or incorporating the word ‘Dunhill’. Apart from being registered, the mark also enjoys protection as a well-known foreign mark and as a common law mark.
“A well-known foreign mark and a common law mark rely for their protection in South Africa entirely on their recognition by the South African public as being a mark designating origin in a particular foreign producer,” he said.
Dean added that such recognition is directly related to the extent of use of the mark. “If use of the mark terminates, the reputation enjoyed by it will peter out and the mark will be extinguished.”
Dean said it is incorrect to assume that the prohibition of the use of trademarks on packaging (especially pictorial trademarks) can diminish the use of tobacco products, which is the objective sought to be achieved by the legislation.
“Governments’ aims to reduce the consumption of tobacco products and liquor products are laudable. However, attempting to achieve these aims by targeting the use of trademarks or other intellectual property is both ineffective and improper.”
Dean said there are suggestions, both internationally and in South Africa that similar steps to those restricting the use of tobacco trademarks should be taken in the case of liquor trademarks, foodstuffs and other goods.
Prof Owen Dean is the holder of the Anton Mostert Chair of Intellectual Property at Stellenbosch University.