As South African and Kenyan brands increasingly collaborate, share markets and engage regional influencers, and as multinational brands frequently choose to launch first in either South Africa, Kenya, or both, the legal terrain around intellectual property (IP) rights has become more complex. In the race to stand out, marketing efforts often push creative limits, but this can sometimes stray into legally risky territory.

Trade mark infringement

Trade mark infringement occurs when a brand uses a mark that is identical or so similar to a registered trade mark that it is likely to mislead or confuse consumers during trade. In such cases, the owner of the original trade mark can take legal action to stop the use and protect their brand.

South African, Kenyan and most other African trade mark laws prohibit the unauthorised use of identical or confusingly similar marks on similar goods or services where there is a likelihood of deception or confusion. These laws also provide enhanced protection for well-known registered trade marks, even when there is no likelihood of deception or confusion, if the use unfairly takes advantage of or harms the reputation or distinctiveness of that well-known mark.

Both countries' legal frameworks align with international treaties and standards, allowing proprietors of well-known marks to restrain use that may cause confusion or interfere with the distinctiveness of their marks. Trade mark rights are territorial, which means they are only protected in the country where it has been registered, unless it qualifies as a well-known mark entitled to protection under the Paris Convention, which enjoys broader protection even without registration.

The two common intellectual property risks that often arise in marketing campaigns are (i) using a registered trade mark without permission and (ii)  referring to a competitor's trade mark in a marketing campaign. 

In practice, it's common for brands to refer or subtly allude to competitors in their advertising. South African courts have held that mere reference to a competitor's trade mark in advertising does not automatically amount to infringement. The legal test is whether the advertisement or campaign makes it seem like there is endorsement from the competitor. 

These "anti-dilution" legal safeguards are designed to protect strong brands from being exploited. If a well-known brand in South Africa or Kenya is referenced in an advertisement without the proper authorisation, it may argue that the advertiser is either free-riding on its reputation to boost its own visibility, or diluting its distinctiveness by associating it with unrelated products or services.

Careful consideration should also be given to how competitor brands are referenced in one's campaigns, ensuring that comparisons are fair, accurate, and unlikely to mislead.

Passing off

Passing off is a vital common law remedy that protects a business's goodwill, reputation and market identity. It stops others from misleading customers into thinking their products or services are connected to a well-known brand.

To succeed in a passing off claim, a competitor must generally establish goodwill or reputation in their brand or business; misrepresentation by the other party that is likely to deceive the public into believing that there is a connection between the two businesses; and damage, or a likelihood of damage, to their goodwill as a result of the misrepresentation.

Passing off often arises when one brand borrows cues, such as name, visual identity or tone, that are distinctive of a competitor, in a way that leads to confusion. To avoid confusion and legal disputes, advertisers should be careful with creative references and seek thorough legal review where needed.

Copyright Infringement

Copyright infringement occurs when someone uses or exploits a work, such as music, images, video or written content without permission of the copyright holder. This includes acts like reproduction, distribution or making the work available to the public in a marketing campaign or online platform.

In South Africa and Kenya, copyright protection arises automatically upon creation, automatically vests with the author and does not require registration. In Kenya, while registration with KECOBO (Kenya Copyright Board) is not mandatory for copyright protection, it can be useful as evidence of ownership in the event of a dispute.

In the context of advertising, copyright infringement may occur when brands or their creative partners use content such as background music, stock photos or video clips, without securing the necessary licences or permissions. Short clips, memes, or popular soundtracks shared via social media can trigger legal claims if used without authorisation.

Risks can be significantly reduced by using or creating original content or securing the appropriate contracts and licences in advance, thereby protecting both the campaign and the brand's reputation from potential legal and financial fallout.

 IP in collaborations and campaigns

Copyright law generally grants the initial ownership of creative works, such as photos, videos, text and music, to the person who created them. However, in advertising collaborations involving influencers, artists, or partner brands, determining ownership can become complex.

To avoid disputes, brands must establish clear contractual agreements that explicitly set out who owns the intellectual property created during the campaign. This includes copyright in the content and any associated trade marks developed or used.

When using an individual's image or likeness for commercial purposes, it is essential to obtain their explicit and informed consent. This is not only a best practice, but also a legal requirement under the Kenyan Data Protection Act 2019, given that Kenyan courts are increasingly upholding image rights and may award damages for unauthorised use.

By securing well-structured contracts that address both IP ownership and image rights, brands can effectively manage legal risks in collaborative marketing campaigns while also protecting the integrity of their relationships with creatives, influencers and partners.

Parody 

A parody may be used to entertain, provoke thought or critique industry norms. From a legal standpoint, it carries risk.

Under copyright law in both South Africa and Kenya, parody may be recognised as fair dealing in certain contexts, such as criticism or review. This can provide some protection for creatives, provided the use is transformative and not purely commercial. However, where a parody campaign uses another brand's trade mark such as its name, slogan or logo, the legal risk increases significantly.

Trade mark law focuses on consumer perception. If the parody creates confusion about the origin or affiliation of goods or services, it could be considered infringement, even if the campaign is intended as a joke or social commentary.

Parody that undermines or dilutes the distinctive character of a well-known brand may also run afoul of anti-dilution protections in both South Africa and Kenya. Given the absence of explicit legal precedent, advertisers should approach parody campaigns cautiously and seek legal advice to mitigate potential trade mark risks.

While parody may be clever and culturally relevant, it can expose a campaign to legal challenge if the advertiser is not alive to the risks and the steps needed to minimise these risks.

Final word

In the world of marketing, creativity often pushes boundaries and rightly so. While bold and memorable campaigns can deliver significant brand value and deepen audience engagement, they also risk triggering legal disputes and reputational damage if they make unauthorised use of competitors' intellectual property. By understanding the IP risks and taking proactive steps to mitigate them, brands can strike the right balance between innovation and compliance.