The new design consists of a green plane (no change there), the name kulula.com close to the tail (in a smaller script than before), a tail that's clearly inspired by and derived from the South African flag (it's much closer to the flag than SAA's tail), and, most controversially, the following wording near the front of the plane: The Most SOUTH AFRICAN Airways.
According to Ilse du Plessis, director in ENS' IP Department, this is a fairly aggressive move, given that kulula has also gone to court over the legality of SAA's bailout. She comments, as follows:
So what are the trademark implications of this, bearing in mind that copying is not necessarily illegal? SOUTH AFRICAN AIRWAYS is a very descriptive trademark and descriptive trademarks are difficult to register, for the simple reason that they should be available to all. Yet descriptive trademarks can be registered if they have in fact become distinctive of one company - this might happen if one company has used it for many years. There is no doubt that SOUTH AFRICAN AIRWAYS falls into that category, especially if one bears in mind that there are a relatively small number of players in the airline industry.
Therefore, it is very likely that the trademark SOUTH AFRICAN AIRWAYS is registered for airline services but does that mean that SAA can stop kulula using the slogan 'The Most South African Airways' - probably not.
For starters, it is quite clear that a trademark registration is only infringed if it is used as a trademark. kulula will no doubt argue that it is using the term The Most South African Airways in a descriptive or non-trademark manner, as part of a slogan and as a genuine description of the characteristics of its services. Even if that argument fails, kulula will argue that there is no likelihood of confusion. It will argue that a mark, which is descriptive but is registered because it has become distinctive, is always weak and difficult to enforce. kulula will argue that a registration for SOUTH AFRICAN AIRWAYS certainly does not confer a monopoly on the term 'South African'.
Furthermore, it will argue that the court must always consider the likely consumer, pointing to the fact that consumers of airline tickets are more sophisticated and perceptive than consumers of everyday goods such as groceries. It is for this reason that, although the names Tazz and Jazz might be confused in some product categories, they will not be confused in the case of cars, because people think long and hard before buying cars.
SAA may then argue that, even if there is no likelihood of confusion, its well-known trademark is being diluted. But that argument's unlikely to succeed because the concept of dilution of well-known brands has been pretty much dead in the water ever since the Constitutional Court dismissed SAB's dilution claim against Justin Nurse for his Carling Black Labour t-shirts, holding that there had to be a real prospect of economic loss.
As for the airplane tail, it is possible that SAA has a trademark registration for its tail design. However, kulula's tail is, in my view, not so similar that it will be held to be an infringement. On top of that, the company will no doubt argue that its tail is simply an indication of the airline's nationality and an expression of patriotism.
This leaves SAA with an action for passing off. I think that SAA's chances may be slightly better here, because the overall effect will then be taken into account. SAA would argue that, because of the goodwill or reputation that attaches to its livery, people seeing kulula's planes might wonder if there is some connection between the companies, some sort of commercial arrangement. After all, co-branding and code-sharing arrangements are not uncommon in the airline industry. In addition, it is very well known that kulula has a connection with British Airways - kulula's holding company, Comair, operates British Airways in South Africa under a franchise arrangement.
It will be fascinating to see what, if anything, SAA does about this. Perhaps it will simply take the view that imitation is the sincerest form of flattery," concludes Du Plessis.
