Eskort’s recent advertising campaign for its “Springbox” has been talked about almost as much as the Springboks’ 7-1 split on the bench against the All Blacks. The tongue-in-cheek reference to the national rugby team has us at Spoor＆Fisher and the nation wondering whether Eskort will be shown a yellow card, or if its conduct is deserving of a straight red in IP law.
Background on Eskort’s Springbox
Eskort, a leading manufacturer of processed food, placed a billboard outside O.R Tambo International Airport stating “GO SPRINGBOX LOVE ESKORT”. It was in the colours of the national sporting teams – green and gold – and emblazoned with the national flag.
The billboard, wishing the South African rugby team well, climbed up X’s (formerly Twitter) trending list, having South Africans abuzz over its spelling and cheek. Speculation was rife. Many assumed that the misspelling was an honest mistake, others thought it was intentional while a few questioned whether the ad was part of a bigger announcement to come.
The campaign coincided with the departure of the Springboks for the Rugby World Cup in France and was clearly aimed at capturing the nation’s attention. The campaign even caught the attention of various news outlets.
In the week that followed, Eskort shared a video across its social media channels which starred the “Springbox” captain, Frikkie, wearing a green and gold rugby shirt depicting the silhouette of a leaping pig, similar in some respects to the well-known Springbok emblem.
Frikkie said “People thought we fumbled the ball with a spelling mistake, but it wasn’t. It was all to launch our new ‘Springbox’ because its spring and it’s a cooler box」。
Following its revelation, the brand proceeded to update its billboard outside O.R Tambo International Airport to read “THE ESKORT SPRINGBOX SA’S FAVE COOLER BOX」。
Some commentators in the marketing and media field have applauded Eskort for its strategy. However, a spokesperson for the South African Rugby Union (SARU) said that while the organization and the Springboks “were flattered and grateful for all the support they have and are receiving from the nation“, they hoped “that support was demonstrated by respecting the intellectual property of the team“.
The spokesperson added that the advertisement, and all other similar infringements, have been referred to SARU’s Intellectual Property (IP) lawyers.
Was Eskort Offside?
From an IP perspective, Eskort’s advertising campaign sits wonderfully at the crossroads of potential trade mark infringement and the constitutional right to freedom of expression.
With the campaign coinciding with the Rugby World Cup, there is a focus on international rugby, which was of course a driving force behind Eskort’s “Springbox” initiative. In this sense, ambush marketing season is open and parties such as SARU and World Rugby will be alert to any and all unauthorised businesses who may attempt to obtain a special promotional benefit from or draw some association with the Rugby World Cup.
Ambush marketing can take two forms, namely “association” and “intrusion”. Ambush marketing by “association” occurs where an advertiser misleads the public into thinking that it is an authorised sponsor of or contributor to an event. This can be done by using the insignia of the event or by misrepresenting to the public in some manner that the marketer or its brand are associated with the event. Ambush marketing by “intrusion” occurs where the ambush marketer isn’t attempting to create the impression of sponsorship, but is just using the event to give exposure to its own brand without authorisation. In both forms of ambush marketing, the marketer has the objective of using the event as a platform to promote its brand or product without incurring the financial and other obligations of a sponsor.
Despite what some commentators have said, Eskort’s campaign is unlikely to fall foul of South Africa’s anti-ambush marketing provisions, as it does not imply an official relationship with the Rugby World Cup.
However, SARU has a number of 商標 registrations for the word SPRINGBOK. The SPRINGBOK trade mark has also been used by SARU in relation to its activities for many decades on an extensive scale. It has thus acquired a great repute and is well known in South Africa.
Owners of well-known trade marks that are registered in South Africa can rely on section 34(1)(c) of the Trade Marks Act 194 of 1993 (“the Trade Marks Act”) which is known as the “anti-dilution” provision. This entitles the owner to prevent the unauthorised use of a mark, in relation to any products or services, which is identical or similar if the use of infringing mark would likely take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered mark, even if there is no likelihood of confusion or deception.
What this means for Eskort, is that even though it’s trying to sell a cooler box, SARU may be able to rely on its well-known SPRINGBOK trade mark for a rugby team and related merchandise to stop Eskort in its tracks. To do so, SARU would need to prove that its SPRINGBOK trade mark is well-known, that SPRINGBOX is similar to SPRINGBOK and that the unauthorised use of SPRINGBOX takes unfair advantage of its SPRINGBOK trade marks.
As the comparison between the trade marks in the context of this provision does not depend on confusion or deception, it may be straightforward for a Court to conclude that SPRINGBOK and SPRINGBOX are similar.
The more difficult question would then be whether Eskort is taking unfair advantage of the SPRINGBOK trade mark. SARU would have to prove that Eskort’s use of the word SPRINGBOX would cause it to suffer economic harm and a diminishing of the distinctiveness and notoriety of the SPRINGBOK trade mark.
Conversely, Eskort could argue that through its campaign it is exercising its right of freedom of expression entrenched in section 16 of the Constitution.
What Do The Courts Say?
UPDATE: SARU has secured an interim court order from the Gauteng Division of the High Court, interdicting Eskort from continuing to use the Springbok brand in its marketing campaign. Eskort was also ordered to “remove the offending marks and get-up from all signage, marketing material, goods and/or products of any nature, including banners… posts and publications of the respondent’s infringing marks on all and any websites, social media and other electronic platforms“.
There has only ever been one trade mark case heard by the Constitutional Court of South Africa, and it involved advertising by a parody t-shirt manufacturer called Laugh It Off ripping off Black Label. In its judgment in that matter, the Court stressed that a balance must be struck between the right of a person to use a trade mark in the expressive sense and the right of the trade mark owner not to suffer undue detriment. The Court remarked that the trade mark owner and the public in general should have a sense of humour while any party who wants to use someone else’s trade mark in the expressive sense should be careful not to cause actual economic harm to the trade mark owner.
As stated by Sachs J in his minority judgment in that matter “Parody is inherently paradoxical. Good parody is both original and parasitic…The relationship between the trade mark and the parody is that if the parody does not take enough from the original trade mark, the audience will not recognize the trade mark and therefore not be able to understand the humour. Conversely, if the parody takes too much it could be considered infringing, based on the fact that there is too much theft and too little originality, regardless of how funny the parody is」。
In that matter, Laugh It Off was ultimately successful, with SAB failing to prove that it had suffered any actual economic detriment.
Will the law have a sense of humour in this matter? Or will SARU show actual economic detriment as a result of the high tackle by Frikkie and his leaping pig? If you stop to consider what Eskort might have had to fork out to sponsor the Springboks, then SARU may have an argument that its suffered detriment in the form of a loss of sponsorship.
In what may be a hotly contested match between SARU and Eskort, after all the bruises and tackles, without specialised IP coaching, both teams may walk away with bonus points.