Gone are the days where advertising campaigns were merely released as either a television, radio or print campaign. Nowadays advertisers, marketers and promoters have many more considerations when proposing an advertising campaign to their clients, in order to maximise exposure of their client’s business. These still include the more traditional: television, radio or print media choices, but now a veritable smorgas board of other choices have been added; including, social events, media releases, blogs, social networking sites, websites, emails, SMS campaigns and promotional items.

Each one of these marketing ‘tools’ bring with them their own (often forgotten) legal considerations. This also stands true for promotional ‘gift’ items. Promotional goods are often items which your client’s customers will utilise regularly (eg. stationary) or, in this case are topical (eg. products relating to the FIFA World Cup event).

With the FIFA World Cup upon us, the question on many businesses’ lips is how to capitalise on the soccer hype. From calendars with photographs of school boys kicking a tin can around a dirt field to special edition gold coins, there’s a promotional article for every class and creed of customer. Putting ambush marketing provisions aside (as this has been discussed ad nauseam in the past 2 years), what are some of the general considerations to take cognisance of when selecting and personalising promotional goods?

With many limited period promotional campaigns, businesses are not so much concerned with obtaining rights, but rather that they do not infringe any third parties’ rights. Hence, in the spirit of the FIFA World Cup, let’s consider how a vuvuzela as a free give-away product could be protected, so a marketer can ensure not to infringe any rights. There are several facets of Intellectual Property that can be used to protect this quasi-musical instrument.

Patent protection

A patent registration protects the product (or invention) itself, preventing others from using the actual product (or at least that part to which protection is obtained). No patent was ever registered for the vuvuzela and as one of the requirements for patentability is that the invention must be ‘new’, this is no longer possible.

When selecting a promotion product, ensure that it is not protected by a patent registration.

Design protection

One is able to obtain a design registration in respect of either the aesthetic or functional aspects of the design of the product (ie. the appearance of the product in respect of the former and the shape of an article dictated by the function which the article is to perform in respect of the latter).

Again no design protection was ever obtained in respect of the traditional (trumpet-shaped) vuvuzela, although some businesses have brought out new shapes which could have been protected.

Trade mark protection

Trade mark rights protect the name of the product, so long as the trade mark is capable of distinguishing the goods from other traders’ goods (ie. the trade mark may not be exclusively descriptive). The name “VUVUZELA” is a perfect example of a mark which is not capable of trade mark protection, as the word describes a type of musical instrument.

There are however a number of parties attempting to obtain exclusive rights to the mark, although, it is not likely that any of these parties will be successful. One party has however, registered the name KUDUZELA® as a trade mark, thus obtaining exclusive rights to use this name.

Copyright protection

Copyright provides protection to a number of different categories of works including artistic works. Therefore if a party has created a unique design, it will be in a position to prevent you from using that design on your vuvuzela. Hence, ensure that any pattern, design or picture has either been copied with authority or that you use your own design on the product.

Publication Name: Intellectual Property - Vuvuzela

Date: April, 2013