FXI Law Clinic Cases

The FXI has contributed to the body of knowledge on freedom of expression in South Africa through cases undertaken by the FXI Law Clinic. The FXI Law Clinic has intervened in over 200 freedom of expression related matters since its inception. 

Brief history of the FXI Law Clinic

The Media Defence Trust was established in 1989 in response to the wave of state action against the media, such as the closure of newspapers and detention of journalists. In its six years of establishment the Media Defence Trust was the sole supporter and defender of independent media and journalists. The Media Defence Trust was incorporated into the FXI in 1994, at the request of its administrators, and became the Defence Fund of the FXI. The Defence Fund was re-launched as the Freedom of Expression Defence Fund in 1997 to reflect the broadening of its role to include all cases involving freedom of expression and access to information. The Freedom of Expression Institute Law Clinic was established in 2005 and is accredited by the Law Society of South Africa.

Laugh it Off and SAB
This appeal stems from SAB claiming that Laugh It Off had infringed their trademark and more particularly dilution of trademark through tarnishment. Laugh it Off had created T shirts that had a similar mark to those of SAB's brands, however the marks provided by Laugh it Off had controversial taglines and slogans. Thus SAB claimed that their marks were diluted through tarnishment.

Section 34(1)(c) of the Trademarks Act 194 of 1993 provides that:

"the unauthorized use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trade mark registered, if such trade mark is well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception: Provided that the provisions of this paragraph shall not apply to a trade mark referred to in section 70 (2)."

One of the main question that is asked is whether if the trademark infringement claim is upheld, would impinge on the right to freedom of expression?
In order for infringement to be established the owner must prove that the mark was used with authority in the course of trade to any good and services, the mark must be identical or similar to the registered, the registered mark must be well known in the Republic and the use of the defendants mark would likely to take unfair advantage of the registered trademark. The appellant relied on the premise that his t-shirts were satirical and in that effect they did not constitute an infringement on the trademark.
In reaching their conclusion the court weighed up the freedom of expression and the trademarks owners tights of property and freedom of trade. The court held that the appellant did not have a justifiable reason to use the registered trademarks and the production of the t shirts cannot be said it was done under freedom of expression, the court held that the appellant abused that right and thus the appeal was dismissed with costs.
Open/View PDF (Laugh-it-Off-v-SAB.pdf)
August 16 2004 By Freedom Of Expression Institute SAB , Laugh it Off