Leaving aside the foolishness of not taking control of related accounts on social networks and either utilising them or closing them off for future use, this Twitter account presents a challenge to Standard Bank. At first glance this is a pretty simple case of trade mark infringement. A disgruntled customer has seized on a Twitter account with a similar name and is using it to criticise Standard Bank. The criticisms are not very well presented and I didn’t notice the extra “l” in the account name and thought, for a moment, that this was a simple case of brandsquatting. As it stands there is also an element of typosquatting (a tactic used with domain names to create confusingly similar domains and capture traffic based on common misspellings).
Despite it being an apparent trade mark infringement on the basis, in part at least, that it constitutes passing off, it does remind me about the case of Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International and Another which reached the Constitutional Court a couple years ago. For those who don’t remember the case, here is a useful introduction to Laugh It Off in the case (at paragraph 4):
The applicant is Laugh It Off Promotions CC, a close corporation that occupies itself with the appropriation of brands which inhere in well-known trade marks. This it does by altering the images and words on trade marks and printing them onto T-shirts. The applicant sells the T-shirts for profit in order to make social comment.
Laugh It Off sold t-shirts that used known SAB brands like “Black Labour” instead of “Black Label”. It was a form of social commentary that infuriated SAB, which saw this as a form of trade mark infringement.
In the media summary of the case (a full copy of the media summary is embedded below but be sure to read the full case for a complete picture of the legal issues) contains the following extract:
This Court holds that Sabmark failed to prove Laugh It Off’s infringement of its trade marks. The “likelihood of taking advantage of, or being detrimental to, the distinctive character or repute of the marks”, has not been established. The rights of persons to express themselves cannot be lightly limited: the harm to the trade mark holder has to be material, and this is one of the internal limitations of section 34(1)(c). However, an interpretation of the section that conforms to the Constitution and the kind of society it envisions requires the one relying on the protection of the Act to show a real likelihood or probability of harm. Such harm must be of an economic sort. This is because the aim of the section is to protect the trade mark’s selling power rather than its dignity. It cannot therefore be inferred from a mere observation of the two marks that there is a likelihood of economic harm. This must be shown by adducing evidence to this end. To allow otherwise would be to permit a near-monopoly on the part of the trade mark holder. This is impermissible in a democracy such as ours.
While I am sure Standard Bank will not look too kindly on this account and may seek to have it shut down or transferred, I wonder if the “Standardcustomer” who created the account wouldn’t be able to rely on the protections afforded by the right to freedom of expression in a similar way that Laugh It Off did. It may well be that Standardcustomer’s right to freedom of expression may trump the bank’s concerns about trade mark infringement. I also wonder whether Standard Bank could demonstrate “a real likelihood or probability of [economic] harm”, which is the test the Court seems to have laid down in that matter.
In real terms, though, Standard Bank could circumvent the traditional trade mark infringment path (ie, the courts) and simply request that Twitter close the account on the basis of its existing rights. It would be a cheaper and arguably more effective option to address this specific account. What it may do is just inflame Standardcustomer and his/her sympathisers even further.
Perhaps what Standard Bank should rather do is engage with its critics better, mitigate the damage already done and proactively address customers’ concerns in a more public forum like Twitter.
Here is the media release for the Laugh It Off case:
(Source: @oliviersandra via another contact on Facebook.)