1 July 2010

Shaq Attack!

The well-known NBA (and movie) star Shaquille O'Neal (Shaq) is preparing to launch his 'Shaq attack' against an online store, Shaqtus Orange Clothing Co, for infringing one of his trade marks. 

Shaq, who had the nickname 'The Big Catcus' and 'The Big Shaqtus' while playing for the Phoenix Suns, alleged that he has acquired common law trade mark rights in these nicknames and that the Shaqtus Orange Clothing Company is infringing these rights.

Shaqtus Orange Clothing Company is the proprietor of a website that features a large cactus mascot (that looks like Shaq) wearing an orange jersey with the number 32 on it (Shaq's number, when he played for the Phoenix Suns).

It would be interesting to see whether South African stars, like the 'Incredible Schalk' or the 'Phalabhorwa Express' will be as serious in defending their nicknames against trade mark abuse!

It is, of course, not so easy to establish and prove common law trade mark rights. An action based on the infringement of common law rights will have to take the form of an unlawful competition and/or passing off action in South Africa.

In order to sufficiently protect their trade mark rights, celebrities could register trade marks in respect of their names and/or nicknames thus enabling them to protect their rights by way of an action for infringement, which is substantially easier than an action for passing off.

Eben van Wyk, Director, Intellectual Property
Regardt Botes, Associate, Intellectual Property 

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