By Christina Gallagher
One of the country's largest fast-food chains, Chicken Licken, is threatening a Johannesburg restaurant, soulsa, with legal action, claiming it has exclusive rights to the word "soul".
Chicken Licken is well known for its 1970s, funk-themed television advertisements and slogans touting its brand of "soul food". Beginning in 1996 the company began registering words and slogans such as "soul", "soul man", "soul'd out", and "got chicken, got soul".
The chain has applied for more than 20 trademarks, including the words "soul food", some of which are still pending.
In 2001, Golden Fried Chicken, Chicken Licken's holding company, applied for a trademark for the word "soul" to be used in connection with providing food and drink. The trademark was granted in June this year.
Soulsa is an upmarket restaurant in Melville, Johannesburg, specialising in its own unique blend of seasonal fruit and vegetables and fine meat dishes. It received its close corporation certificate in April 2004.
Conway Falconer, co-owner of soulsa, says that for the past few months Chicken Licken has been contacting him to change his restaurant's name. "Their strategy has been to attempt to intimidate us with aggressive legal letters demanding that we cease trading as soulsa."
He adds that Chicken Licken has demanded that the owners disclose their earnings so that they can calculate an appropriate royalty payment.
"They obviously have deeper pockets than we do, and even though we have an exceptionally strong case, even a victory for us could cost a small fortune," he says.
In the meantime, Falconer has lodged an application with the registrar of trademarks to "expunge the word 'soul' across all categories registered by Golden Fried Chicken".
George Sombonos, managing director of Chicken Licken, says that if he left the use of the trademark unchecked, it would "likely snowball out of control and then my brand equity would be lost".
He says words that are generic to the food industry, such as "grilled", "fried", "hamburger", and "chips", cannot be trademarked. "But the word 'soul' is not common to the trade.
"You may say that soulsa doesn't sell fried chicken, but if we turn a blind eye to this restaurant, then it will be precedence for the next food-related company," says Sombonos.
A source from the Companies and Intellectual Property Office (Cipro) - which is part of the Department of Trade and Industry - said that after doing an initial check on the word "soul" and its use in the food industry it was found that there were more than 230 companies using the word "soul", and half were related to food. The source also said many of the food companies and/or restaurants had registered their companies more than 12 to 15 years ago.
Sombonos is no stranger to litigation with restaurants. In the early 1990s he was sued by the McDonald's corporation for applying for the registration in South Africa of the trademarks "McDonald's", "Big Mac" and the golden arches design to be used at Joburgers Drive-Inn Restaurant.
When Sombonos refused to comply with McDonald's letters of demand, a trademark battle ensued, which the international company won on appeal.
Sombonos was also sued by Kentucky Fried Chicken (KFC) because Chicken Licken's name was too close to KFC's slogan, "finger lickin' good". He won that case.
The source at Cipro explained that the purpose of a trademark is to protect the lawful owner and to safeguard the public from obtaining counterfeit goods. The representative said "soul food" did not describe the quality of the food and therefore could be used as a trademark - unlike, for example, "beautiful chicken".
But Kenneth Woods, CEO of Sylvia's, one of the most popular "soul food" restaurants in the US, begs to differ.
The true origin of "soul", as in "soul food", comes from the American southern states. Woods's parents founded the Harlem, New York, restaurant in 1962 and it has become renowned for attracting locals, tourists, and celebrities such as Bill Clinton and Nelson Mandela. Its owners are regarded as authorities on the soul-food genre.
"The food is about how we cook with inspiration, and it is from our soul that we have developed this cuisine," Woods said.
Woods, whose parents are originally from South Carolina, said soul food comes from the way slaves cooked and has evolved into a popular cuisine that can be found in restaurants located throughout the world.
When asked if he had ever thought about trademarking the word "soul", Woods laughed and said: "I don't think you can trademark such a word. I have never thought of it. It would be an infringement on the industry of soul food as a whole."
He added: "Here we also have Korean soul food, so that means the term is a matter for the taking. The term 'soul' is too broad to have ownership."
"It is amazing that something like this would pass. I think it is a mockery that is happening. It needs to be exposed."
Eugene Honey, a trademark lawyer at Bowman Gilfillan Inc, said the "soul" case was "borderline at best".
"The question to ask would be: is the trademark capable of distinguishing itself from products or services from those of its competitors in the industry?
"We are dealing with a common dictionary term - and that usually sabotages the distinctiveness of the trademark."