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Published Date: August 1, 2017

Despacito, Double Bogeys and Dilution all feature in the five most interesting IP stories of July 2017.

1. No Despacito for the Venezuelan President

Earlier this month, the Venezuelan President, Nicolás Maduro, used a remix of the Latin hit Despacito to encourage Venezuelans to vote for the Constituent Assembly, which will have powers to rewrite the national charter and supersede other institutions.

This was not sanctioned by the Puerto Rican singers of the song, Luis Fonsi and Daddy Yankee who released the following statement:

“At no point was I asked, nor did I authorize, the use or the change in lyrics of Despacito for political ambitions, and much less in the middle of a deplorable situation that Venezuela, a country I love so much, is living,” said Luis Fonsi on Twitter.

As the author of the copyrightable works (both musical and literary works in this case), Luis Fonsi has the moral right to protect his work’s integrity. The South African Copyright Act provides that the author of a work may object to any distortion, mutilation or other modification of the work where such action is or would be prejudicial to the honour or reputation of the author and there are analogous laws in many jurisdictions internationally.

“That you illegally appropriate a song (Despacito) does not compare with the crimes you commit and have committed in Venezuela. Your dictatorial regime is a joke, not only for my Venezuelan brothers, but for the entire world,” said Fonsi who left his words un-minced.

Despite the fact that non-Spanish speakers are mangling the lyrics of Despacito on dance floors across the Western world, this is authorised, and even encouraged by Fonsi and Yankee.

Fun fact: Despacito is the first (mostly) Spanish language song to reach number one on the Billboard Hot 100 since 1996’s Macarena and has topped the charts in 45 different countries.

2. Google Escapes Genericide


It’s a dramatic headline, okay. It also has nothing to do with the time my Mom claimed:“I deleted Google”.

The term genericide applies when a trade mark has become the generic name for, or synonymous with, a general class of product or service, usually against the intentions of the trade mark’s owner. The death of several trade marks that have become generic include escalator, thermos and cellophane. Yes, they were all once trade marks that became the generic descriptor of the goods.

Has Google become generic? This Ninth Circuit Court of Appeals in the United States recently said no! The case is discussed in detail on IP Watchdog here.

Brand owners may want to look at the INTA’s Practical Tips on Avoiding Genericide.

3. Rock on! Are hand gestures registrable as trade marks?

Is a hand gesture a trade mark, or can it even be registered as a trade mark? The co-lead singer of the band KISS, Gene Simmons, seemed to think so. He applied to the United States Patent and Trademark Office to register the following hand gesture as a trade mark:


However, Forbes Magazine recently reported that “Simmons has apparently reconsidered whether he might have valid trademark rights to the hand gesture, as he expressly abandoned the application with the United States Patent and Trademark Office. It is also noted that his application drew a fair amount of criticism from fellow musicians and others who saw the application as a shameless overreach by Simmons.”

Wensel Britz considered what the likely outcome have been had Mr Simmons applied to register the hand gesture in South Africa on the Adams & Adams website. We think that this post will give you some insight into what is registrable as a trade mark.

4. A Double Bogey for Titleist


An interesting trade mark storm is brewing in the United States between the golf brand Titleist and the online retailer I Made Bogey which trades in a number of goods which parody the Titleist brand by using the trade mark Titties – in the famous Titleist font.

The classic trade mark infringement test involves an assessment of whether a consumer will be confused or deceived into thinking that goods emanate from Titleist. Another form of trade mark infringement is known as trade mark dilution which in South Africa protects well-known trade marks from another party taking unfair advantage or use that is detrimental to the distinctive character or repute of the registered trade mark. Importantly, this assessment does not require a likelihood of deception or confusion.

An excerpt from

“In the suit, Titleist claims both trademark infringement and dilution. For dilution to stick, it must show that I Made Bogey’s hats tarnish Titleist’s reputation or blur its fame. For trademark infringement, however, Titleist must show that consumers would be confused by the two logos. ‘They would have to show that people would think Titleist is making hats with the sexually explicit misspelling’, said Tobin, the attorney. And that would be pretty difficult, she said.”

5. Adams & Adams launch the #IPEveningSeries at The Box Shop in Soweto

Darren Olivier introduces the panel.

The IPLive team presented to The Box Shop’s network of passionate entrepreneurs on 27 July 2017 on the key IP considerations vital for entrepreneurs to consider. As well as focusing on the Louis Vuitton Basotho Blanket saga, the team covered the following topics:

How to identify intellectual property (IP)
How to set up a basic IP management structure that grows with your business
How to protect and manage IP cost effectively
How to make IP create value for your business
To see more photos of the event (or even just photos of Darren Olivier’s purple trousers) have a look at the gallery here.

Darren Olivier
Wensel Britz
Partner | Trade Mark Attorney

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