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The legal pitfalls of offensive branding

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Published Date: November 4, 2019

Author: Kareema Shaik

Over the past year or so, a surprising number of international brand owners have come under fire for offensive marketing campaigns, products, and brand names.

Many of the incidents relate to blackface, a practice that emerged in the 19th century, where stage actors would don black make-up with exaggerated red lips. The practice was intended to poke fun at African Americans and is today widely considered racially offensive.

Gucci, Katy Perry, and Prada have all withdrawn, with apologies, the products depicted below which many believe, evoke blackface.vc_single_image image”43667″ img_size”full”vc_column_textOther examples include H&M “Coolest Monkey in the Jungle” hoody, which incited riots locally, the recent Gucci fashion show incorporating straitjacket-styled clothing which was believed to make light of mental illness and (again!) Gucci’s sale of Sikh turbans viewed as cultural appropriation.

Perhaps the most unforgettable of the lot was the infamous Kendal Jenner/Pepsi advert in which the model and reality star was depicted extinguishing tensions at a riot by handing a white police officer a can of Pepsi. The advert was widely criticised, on the one hand, for taking advantage of the Black Lives Matter movement gaining momentum at the time and, on the other hand, for making light of social justice demonstrations.

Advertising is regulated in South Africa by the Advertising Regulatory Board (ARB). The ARB’s Code of Advertising Practice prohibits advertising which “may offend against good taste or decency or be offensive to public or sectoral values and sensitivities, unless the advertising is reasonable and justifiable in an open and democratic society based on human dignity, equality and freedom”.

This provision was recently tested in a complaint filed in respect of Chicken Licken’s Legend of Big John reverse colonialism advert. The advert portrays a young and confident African man, Big John, in the year 1650, leaving the continent on a boat “to satisfy his hunger for adventure”. His travels eventually lead him to discover a foreign land, namely Holland,  which he decides to call “Europe”.

The consumer complaint was based on the grounds that the advert “makes a mockery of the struggles of the African people against colonisation by the Europeans in general, and the persecutions suffered at the hands of the Dutch in particular”.

In defence, Chicken Licken stated that the ad was in no way intended to make a mockery of the struggles of colonisation but rather to show that South Africa “has all the potential to conquer the world and rewrite history from an African perspective”. According to the fast-food chain, the underlying purpose of the advert was “to create a sense of pride and patriotism amongst South Africans”.

The Directorate of the ARB recognised that the advert was a parody “crafted with the intentions of being humorous” but found that the reality of colonisation was not something that can be rewritten or trivialised. The decision was taken on appeal by Chicken Licken.

The ARB’s Final Appeals Committee rejected the appeal, finding that the “right to use parody in freedom of commercial speech cannot be separated from a duty of care to ensure that the exercise of that right does not offend or cause harm to others”. The Committee further found that “one cannot, in constructing parody…distort or misrepresent, particularly where such misrepresentation or distortion is offensive”. The omission of the adverse effects of colonialism from the advert, presenting it as something harmless, was found to be insensitive and offensive to those who suffered under colonisation.

Not to be outdone, offensive trade marks have also been in the news of late. In the USA, an Asian-American band applied to register their band name The Slants at the US trade marks office. However, the application was refused on the basis of local legislation prohibiting the registration of offensive or disparaging marks. “Slants” is a racial slur for people of South and South-East Asian descent. The band adopted the name to reclaim and transform the derogatory term into a source of pride.

The band filed a lawsuit against the trade marks office, and the matter eventually landed up with the Supreme Court, which found that the provision relied upon to refuse the application violated the First Amendment right to free speech. Therefore, the band was allowed to register its trade mark.

The SLANTS decision, issued in 2017, has already had wide-reaching consequences and ended a legal battle lasting almost 30 years involving, inter alia, the registration of the trade mark REDSKINS by the Washington Redskins NFL team.

REDSKINS is considered a derogatory term for Native Americans, and an application for the cancellation of the trade mark was granted by the US trade marks office on that basis. The Supreme Court overturned that decision based on its earlier SLANTS decision.

In South Africa, 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 offence to any class of persons.

While South Africans also enjoy the Constitutional freedom of expression, the right does not extend to the “advocacy of hatred that is based on race, ethnicity, gender or religion, and that constitutes incitement to cause harm”. Any attempt to attack the constitutionality of Section 10(12) on the basis of free speech is, therefore, likely to be an uphill battle insofar as fundamental rights are concerned.

What is considered moral or offensive changes with time. For instance, a local application for BITCH in class 25 covering clothing was refused in 1998, but the same trade mark in class 3 for soaps, perfumes and cosmetic products was accepted in 2011.

An application filed for FAT BASTARD in class 33 covering alcoholic beverages was provisionally refused in 2007 on the basis that it was offensive. However, this decision was reversed after submissions were filed, explaining how the trade mark was adopted and that it has widely been used without complaint from the public.

In addition, the register is now filled with trade marks incorporating the word CANNABIS and cannabis-related images. The public perception with regards to cannabis has clearly changed in the last few years, largely thanks to the landmark Constitutional Court decision decriminalising the private use of the drug.

With social media forming an integral part of our lives today, allowing direct communication between consumers and brand owners, bad branding decisions will not only be called out immediately, loudly and widely, but they also have the potential to be immortalised, resulting in long-term reputational damage.

It is important for brand owners to take the current social and political landscape into consideration when strategising. Responsible branding is based on inclusivity and representation. Gucci, Prada, and H&M have all since incorporated programmes to promote diversity within their organisations. Avoiding egg-on-face situations will be easier if people from diverse cultural and social backgrounds are sitting at the creative table when decisions are made.

Listen to the Podcast Version of this Article

Kareema Shaik
Partner | Trade Mark Attorney

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