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 and more critical. In the race to stand out, marketing efforts often push creative limits, but this can sometimes stray into legally risky territory.
This is according to John Syekei, Partner and Head of IP and Technology; Ghadieja Khan and Richard Odongo, Senior Associates; Nabila Hendricks, Associate; and Victoria Njenga, Candidate Legal Practitioner, Bowmans Kenya.
Catchy Campaigns, Costly Mistakes: IP Risks To Watch For
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.
Both South African and Kenyan trade mark laws and in most cases other trade mark laws on the African continent 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 South African and Kenyan 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 the trade mark is 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. There are two common intellectual property risks that often arise in marketing campaigns:
– Using A Registered Trade Mark Without Permission: This can happen when launching a new product or campaign that uses a name already registered and owned by someone else. If challenged, this could result in legal action and even a full product or brand re-launch.
– Referring To A Competitor’s Trade Mark In A Marketing Campaign: Whether through direct comparison or creative reference, this can trigger infringement or passing off claims, especially if it misleads consumers or unfairly capitalises on the competitor’s reputation.
In practice, it’s common for brands to refer, or subtly allude to, competitors in their advertising. Notably, 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. Well-known brands in South Africa or Kenya can take legal action if they believe their reputation is being unfairly used without permission.
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, which can cause confusion or harm the original brand, potentially diverting sales or damaging the original brand’s reputation.
To succeed in a passing off claim, a competitor must generally establish:
– Goodwill or reputation in their brand or business.
– A misrepresentation by the other party that is likely to deceive the public into believing that there is a connection between the two businesses.
– Damage, or a likelihood of damage, to their goodwill as a result of the misrepresentation.
In advertising and brand campaigns, 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. This risk is particularly high in industries where companies offer similar products or services and target overlapping markets.
Using elements of a well-known brand, directly or indirectly, can lead to a passing off claim. 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.
A recent example in Kenya highlighted the risks of unauthorised content use. Kenyan hip-hop group ‘Wakadinali’ accused a social media influencer of copyright infringement for using their song ‘Geri Inengi’ in a video promoting a bank’s services without securing the necessary permissions. The case underscored the importance of synchronisation licences when incorporating copyrighted music into video advertisements, especially in the digital space, where content is widely shared and easily accessible. As the rightful copyright holders, Wakadinali has the legal authority to pursue civil action against any party that unlawfully exploits their work for commercial gain.
For advertisers, the takeaway is clear: 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.
Who Owns The Content? 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 down the line, brands must establish clear contractual agreements that explicitly sets out who owns the intellectual property created during the campaign. This includes copyright in the content and any associated trade marks developed or used.
Additionally, 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.
The Legal Fine Line Of Parody In Brand Campaigns
A parody can be a powerful creative tool in advertising. It may be used to entertain, provoke thought, or critique industry norms. However, from a legal standpoint, it carries risk, especially when it involves trade marks or copyrighted material.
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.
Finally, in the dynamic 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 in advertising and taking proactive steps to mitigate them, such as getting clearance opinions from IP lawyers, brands can strike the right balance between innovation and compliance, ensuring their campaigns make headlines for the right reasons.
BOWMANS
https://bowmanslaw.com
