Legislation to prohibit the use of trademarks on tobacco
products is unconstitutional and will make no contribution to discouraging
smoking. This was the view of Professor Owen Dean of the Faculty of Law at
Stellenbosch University (SU) in his inaugural lecture in the Jannasch Hall of
Dean said many countries, including South Africa, intend to
adopt legislation restricting or prohibiting the use of logos on cigarette
packs, while only allowing brand names or product names, depicted in a plain
manner, to be displayed.
As regards South Africa, he argued that such legislation
infringes both sections 25(1) and (2) of the Constitution because it will bring
about an arbitrary deprivation of property, in the form of trademarks, and
indeed an expropriation of such property.
What makes it unconstitutional
Dean pointed out that since trademarks are assets of a
business, they can be regarded as property, and that this had received
recognition by the court.
“Preventing a trademark from being used leads to it being
extinguished and this amounts to the destruction of an item of property,” he
According to Dean, the use of trademarks in relation to
particular goods or services is the lifeblood of such trademarks.
“They are commercial assets of considerable value.”
“Legal protection of trademarks is essential if brands are
to serve their purpose and fulfil their economic function.”
In this regard, Dean referred to the trademark DUNHILL, and
said Dunhill Tobacco of London Limited has a large number of pictorial
registered trademarks in South Africa consisting of or incorporating the word
‘DUNHILL’. Apart from being registered, the mark also enjoys protection as a well-known
foreign mark and as a common law mark.
“A well-known foreign mark and a common law mark rely for
their protection in South Africa entirely on their recognition by the South
African public as being a mark designating origin in a particular foreign producer,”
Dean added that such recognition is directly related to the
extent of use of the mark.
“If use of the mark terminates, the reputation enjoyed by it
will peter out and the mark will be extinguished.”
Dean said it is incorrect to assume that the prohibition of
the use of trademarks on packaging (especially pictorial trademarks) can
diminish the use of tobacco products, which is the objective sought to be
achieved by the legislation.
“Governments’ aims to reduce the consumption of tobacco products
and liquor products are laudable. However, attempting to achieve these aims by
targeting the use of trademarks or other intellectual property is both
ineffective and improper.”
Dean said there are suggestions, both internationally and in
South Africa that similar steps to those restricting the use of tobacco
trademarks should be taken in the case of liquor trademarks, foodstuffs and