South African hip-hop musician Refiloe Phoolo, aka Cassper Nyovest, caused a stir on social media last month about alleged trade mark infringement of the #FILLUP trade mark by fellow musician Benny Mayengani who used the hashtag #FillUpGiyaniStadium to attract concert-goers to a show at Giyani Stadium in Limpopo.

Despite the debate on the matter on twitter between fans and EFF members, Mr Nyovest has filed trade mark application nos. 2016/33398 and 2016/33401, which, once registered, will protect the use of the trade mark #FILLUP… in relation to clothing (class 25) and entertainment services (class 41).

However, can Mr Nyovest claim rights in and to an event name?

Firstly, an event itself, namely the layout and activities inherent to the particular event, cannot qualify for trade mark protection. Trade marks are words, names, phrases, slogans or logos used to identify the goods or services of a particular business or individual. As such, a name, logo and/or slogan used to market and brand an event can be protected as a trade mark. A good event name should be original. Generic event names will not be granted trade mark protection because the Trade Marks Office will not grant a monopoly over a commonly used term.

Secondly, it is generally accepted that a trade mark application secures the date of application and not much else. In South Africa, there are two standard forms of protection that can be relied upon in order to stop third parties from operating an event under the same name, namely with a trade mark registration or common law (unregistered) rights.

Trade mark infringement proceedings can only be instituted in respect of a registered trade mark. Therefore, as Mr Nyovest’s #FILLUP mark is yet to be registered, he will not be entitled to institute trade mark infringement proceedings against Mr Mayengani. However, under the common law, Mr Nyovest may be entitled to bring an action of unlawful competition against Mr Mayengani for passing off use of the #FILLUP trade mark which has a bearing on possible injury to the goodwill of Mr Nyovest’s business. This remedy will only be available once a reputation has been established.

For these reasons, although Mr Nyovest may appear to be on his way to owning the trade mark rights associated with the name of the event, he may find it difficult preventing third parties from using the mark until such time that his #FILLUP trade mark is registered.

Written by Chezanne Haigh, KISCH IP