The sound of the “vuvuzela” horn has become one of the defining features of the 2010 Fifa World Cup, and over the past month demand for the instrument has shot up not only in South Africa but across the world. With the tournament reaching its climax this Sunday, it can only be a matter of time before the vuvuzela makes its presence felt on the UK’s high streets. However, according to
Richard Plaistowe, a lawyer in our
intellectual property team, question marks over the ownership of the “vuvuzela” brand could potentially lead to serious financial consequences for retailers choosing to cash in on the instrument’s popularity.
He comments:
“South African company Masincedane Sport CC, a manufacturer of vuvuzelas, has registered ‘vuvuzela’ as a Community trade mark (which covers the whole European Union) for musical instruments, games and playthings, toys, and sporting articles. Hence, if anyone imports into the UK, or sells within the UK, any horn branded as ‘vuvuzela’ that was not originally placed on the market in the EU by Masincedane or with the company’s consent, this would amount to an infringement of its trade mark. This would also apply to horns manufactured without the permission of the company, as well as to genuine Masincedane vuvuzelas imported from South Africa without its consent. A successful infringement claim could lead to an injunction stopping the retailer from selling the horns, an award of financial damages, and also an order to destroy or deliver up stocks of infringing vuvuzelas.
“The only defence would be for a retailer to make an application to revoke Masincedane’s trade mark on the basis that ‘vuvuzela’ has become the common name for these particular horns among both the retail trade and the majority of the EU public. The company’s South African trade mark has already been challenged. Given the levels of media coverage surrounding the controversial sound made by vuvuzelas during World Cup football matches, it is clear that much of the EU public now assumes that ‘vuvuzela’ is simply a generic term for these particular horns, meaning that Masincedane’s Community trade mark may already be vulnerable to revocation on this basis.”