Thread by @senamisomoyo

It’s time for #IPThursday with your favourite lawyer. Today we’re going Van Toeka Af, as far back as the 1980s, to what I like to call the “Chicken Wars”.

Its started out as David v Goliath in fast food chains, to very bitter and often petty Trade Mark battles over 30 years.

I’ll start this story at the very beginning, in 1930 to be exact. Harland David Sanders, born in 1890, was considering going into the food industry.

Harland had learnt how to cook from his mother and he thought he was good enough to do it commercially. Having bounced around a few jobs throughout his career, he had finally decided to pursue his passion....frying chicken.

His chicken was amazing and people loved it. This earned him the honorary title “colonel”. He did so on a roadside in Kentucky for a few years. In 1952, he opened his first franchise and named it Kentucky Fried Chicken. A terrible trade mark, but more on than later.

Kentucky Fried Chicken grew in popularity and was one of the first restaurants to offer a chicken based menu. Most of the fast food companies at the time sold hamburgers and people loved that Sanders was doing something different. The secret to this success, 11 different spices.

Over the years the Franchise grew to become the second largest fast food outlet in the world, it is now second only to McDonald’s. And with that, the trade mark Kentucky Fried Chicken became popular.

Rule number one of trade mark law is that your trade mark should never be descriptive. It should not br made up exclusively of words that describe what you sell, where it comes from or anything that describes your service.

Also no one person can have exclusive rights to any geographical name. For example no one can have exclusive rights over the words “Joburg, Jozi, London or....Kentucky”. I know what you’re thinking, what about Windhoek Beer? There are a few exceptions but thats for another day.

As the restaurant became famous many people started including Kentucky in their business names to ride off their reputation. Because Kentucky was a geographical name, there was nothing they could do to stop them.

So they decided to change their name to just KFC (another terrible trade mark). This is because it led to more copycats. The shorter your trade mark, the less distinctive it is.

They also decided to adopt the tagline “Its Finger Lickin’ Good”, which brings us to the start of the legal wars in our story.

Meet George Sombonos, he was an entrepreneur born in 1930 in South Africa. In the 1970s, his family owned a roadhouse in Jhb. However, he wanted to find out why Americans love fried chicken.

So Sombonos went to the USA to do “research”. He found that black Americans in particular loved fried chicken and they really loved KFC. Fried chicken was associated with the “Soul Food Cool culture” in black urban spaces, who tended to experiment with spices a bit more.👀

He found a recipe for chicken in the US which he believed would be a hit in SA and bought it. He brought it back home and opened a fast food outlet called Chicken Licken, starting a war with KFC.

At the time, KFC was establishing itself as the biggest food outlet in SA. Making millions in revenue. They would go on to become the biggest fast food outlet in SA. It was purchased from Colonel Sanders and over the years, its been owned by a few big groups.

But the establishment of @ChickenLickenSA would be a serious competitor and an instant hit with black people. KFC’s monopoly over fast food chicken in South Africa was in danger.

So they decided to deal with Chicken Licken the only way it knew how, with a lawsuit. KFC accused Chicken Licken of infringing on their registered trade mark “It’s Finger Lickin’ Good”. I know, it sounds like a bit of a stretch, but there was a legal basis for this.

KFC said the word “LICKEN” in the Chicken Licken trade mark was almost identical to the word “LICKIN”, in their registered trade mark “ITS FINGER LICKIN GOOD”. And because of this, people would associate the new restaurant with KFC. Give that some thought.

They also claimed that Chicken Licken was passing off their business as affiliated with KFC. Sombonos however claimed that the name came from a Children’s nursery rhyme book.

I do think he chose the word LICKEN on purpose. He had a history of “stealing” trade marks, (I might post McDonalds v Chicken Licken soon as a follow up to this if we get a lot of RTs 😂).

Sombonos said no one would confuse CHICKEN LICKEN with with ITS FINGER LICKIN GOOD.

KFC hoped that a lawsuit would make Chicken Licken change their name to something else or put him out of business altogether. Big companies often use litigation to bankrupt you. However, Sombonos had quite an “appetite” for a court battle I must say, and he was willing to fight.

To KFC’s surprise, Sombonos filed a counter suit claiming that the tagline “ITS FINGER LICKIN GOOD” does not qualify as a trade mark. He claimed that the phrase was a laudatory epithet which does not qualify as a trade mark. The case got interesting....

You’re probably thinking here goes Sena with the fancy made up words again. Well, its not made up. A laudatory epithet is a word or phrase that gives praise or lauds the goods you are selling. ie. “Great Chicken”, “Tasty Wings”.

You can use that to advertise your goods, but not as a trade mark (to prevent other people from using it). KFC were fuming at this point and they escalated the fight with Chicken Licken, dragging them to court.

Essentially the court had to decide 2 things:

1. Whether the the word LICKEN would lead to people confusing it with ITS FINGER LICKIN’ GOOD.

2. Whether ITS FINGER LICKIN’ GOOD is a laudatory phrase that only gives praise to the chicken. Which would mean it would be cancelled.

The court dealt with KFC’s case first, the infringement and passing off. The judge said ITS FINGER LiCKIN GOOD and CHICKEN LICKEN are not similar at all. He dismissed @KFCSA ‘s claims of infringement as well as passing off. Chicken Licken was not guilty of trade mark infringement

He then had to consider whether the term ITS FINGER LICKIN GOOD is laudatory. If it was, then anyone else, could use the phrase.

The word “good” is obviously laudatory as it praises the taste of the chicken. So the court had to consider whether the phrase “FINGER LICKIN” is distinctive or if it was also laudatory.

Chicken Licken argued that “Lickin” indicates delighted anticipation for the food. When used for chicken, it’s laudatory, which has the effect of praising it. They also argued that Finger Lickin as a whole, is very widely used to indicate that food tastes good. You still with me?

The court disagreed with Chicken Licken. They said that the phrase is not common, and when someone says it, they associate it with KFC and not with anticipation of tasty food. They also said that it does not give praise to the goods, it serves to distinguish.

I’ve thought about this a bit, and I have to agree. The phrase is just over the line. Although it implies tasty food, it doesnt really praise it. When you think Finger Lickin Good, you think KFC and not necessarily anyone licking their fingers. Case in point, this brilliant ad.

So both parties had their lawsuits dismissed, but Chicken Licken was the big winner at the end of the day. They would go on to become one of the biggest franchises in SA, not as big as KFC but still big. Kinda like noisy neighbours, Man Utd and Man City kinda rivalry.

This was not the last time the two would be involved in a bitter legal dispute. In 1989, Chicken Licken registered the trade mark TWISTIES. However, somewhere along the line, they stopped using it....

According to trade mark laws, once you stop using your trade mark for 5 continuous years, you will lose the rights and anyone can have it removed from the register. Generally, the rule is “Use it or Lose it”.

This is exactly what happened to Chicken Licken’s TWISTIES trade mark. KFC was watching them closely and paid attention to whether they were using the mark. After 5 years had passed, they applied to have it removed. All is fair in Chicken Wars right?

They then went on to register their now famous TWISTER trade mark. Chicken Licken went to court and this time KFC won. Chicken Licken lost their TWISTIES mark due to non-use, and then KFC released the TWISTER in SA.

Understandably, this did not improve the relationship between the two food giants. Chicken Licken would continue to troll KFC whenever they could. In 2003, they released this TV ad mocking colonel Sanders. It even made reference to their ITS FINGER LICKIN GOOD trade mark.

So KFC resorted to legal proceedings against them....again. They submitted a complaint with the the Advertising Standards Authority on the basis that the ad exploited their goodwill and that of its icon Colonel Sanders. So they showed up again, ready to fight Chicken Licken.

The ASA said that Chicken Licken were very arrogant and dismissive in dealing with KFC. The ad was banned on the basis that it was a deliberate mockery of KFC’s brand in an advert. Which isn’t allowed under Advertising Guidelines.

In 2008, Chicken Licken released another ad mocking Colonel Sanders. This time the jabs were more subtle and the colonel was different. KFC submitted another complaint with the ASA. This time Chicken Licken won. The ASA wasn’t convinced that they were mocking the colonel....Yea😂

Maybe I should do a thread on banned SA adverts and why they were banned in future?🤔

Sombonos himself said he was actively involved in the ads and approved all of them. As a certified troll myself, I have to applaud a petty billionaire.

Colonel Sanders died in 1980 at the age of 90 and George Sombonos in 2016 at the age of 67. But both companies are probably still going at it to this day. IP is the easiest legal way to attack your competitors.

Their legacies left a very interesting debate. Who has the better Wings?

Big Lessons: Use your trade mark or you will lose it. Its not enough to just register it. Avoid Laudatory Epithets in your mark, they are not distinctive. Comparative adverts where you mention your competitors are not allowed and lastly don’t stop sharing:

#Zimbabweanlivesmatter