Chicken Licken has fed Mzanzi fried chicken meals like “Soulman load up” doused in “soulfire” sauce with by a side of “soulslaw” since the Eighties. Being a well-loved fast-food chain, this home-grown franchise is one of the biggest of its kind in South Africa. However, it will only share its soul up to a point.

In the first few months of 2019, the company took legal action against a café and a frozen meals business over their use of “soul”, a word Chicken Licken had trademarked decades before, despite it being used in connection with vegan food.

The café’s name, Oh My Soul Café, was registered in July 2018 and opened its doors two months later in Durban North. They served only vegan food, with plant-based meat alternatives such as “vicken” and “vish”.

The café had been open for six months when the owners, Tallulah and Richard Duffin, received a letter of demand. Golden Fried Chicken, which trades as Chicken Licken, alleged infringement of its trademark “soul” and asked them to stop using “soul” in any form.

“Soul” has been central to Chicken Licken’s brand identity and marketing strategy.

“The recipe [for the fried chicken] came from Waco, Texas, and there was appeal in the idea of soul music and Afrocentric excellence… The initial promotions centred on the Soul Doctor and Soulman with large Afro hair which used the recurring idea that eating Chicken Licken products gave a person Soul,” explains Golden Fried Chicken’s attorney, Ron Wheeldon.

Since “soul” became such a central feature of the company’s branding, the late founder George Sombonos took the decision to trademark the word and its variations.

In 1994, Golden Fried Chicken had registered “soul” as a trademark under the classes of 29 and 30.

This meant that the word could not be used by anyone else in trade to describe certain types food or drink. In 2001, this was changed to include restaurants and food services. Over the years, other variations of “soul” have been trademarked such as “soulslaw” and “soul food”.

The Duffins’ lawyers negotiated for three weeks with the attorney representing Golden Fried Chicken. Oh My Soul Café agreed to drop “licken” for “vicken” and “soul salad” for “sacred salad”, but would not drop “Oh My Soul” from the cafe’s name.

“We believe that the earth was made for all beings, not just human beings – My Soul honours your soul. Oh My Soul Café is a voice for the voiceless. We strive to make a difference in this cruel world by creating awareness and being kind through food that is 100% cruelty-free,” explains Tallulah Duffin.

The name of the café was inspired by this philosophy.

“Our soul is the sacred essence within us, our divine purpose and the guiding force behind our lives. All creatures are deserving of a life free from fear and pain. If they breathe they live. If they live they feel. If they feel they love. If they love they are aware. If they are aware, they have a soul,” explains Duffin.

Not long after their refusal, the café received a notice of urgent adjudication and a week later they found themselves in the KwaZulu- Natal High Court.

The case was heard a few days later and a judgment was given on 25 March 2019. The café won, but the appeal soon arrived.

Wheeldon explains that it was necessary for Golden Fried Chicken to take the café to court, although it is vegan, because in his view trademark owners will weaken their rights to their trademark over time if they do not stop others from using the mark. He gave the example of escalator and cellophane as trademarks which became null and void because their owners did not police their use.

“To avoid the dilution of rights in the minds of consumers, infringing uses need to be stopped and as promptly as possible,” he adds.

In the judgment paper seen by Daily Maverick, it states that infringement occurs if there may be deception or confusion about which company the mark is connected to and if this will damage or dilute the brand or reputation of the trade mark owner’s company. The people whose perceptions are in question are those who would be “… likely to purchase the kind of goods to which the marks are applied”.

But,the KwaZulu-Natal High Court judge Dhayanithie Pillay states in the judgment, context is important in determining whether the trademark will be confused. Cast the net too wide and one company may have the monopoly over a mark and hinder freedom of trade.

According to Golden Fried Chicken, their trademark “soul” expresses “… African cool, a pride in Afrocentric heritage typified by success against adversity, a rising above racial prejudice and stereotypes where ‘blackness’ is not a shortcoming but a positive advantage”.

It draws inspiration from the civil rights movement of the 1960s in the US and the soul singers of the same era. They argue it is an “…icon of the entire Chicken Licken experience…” which sets them apart from their main competitor, Kentucky Fried Chicken.

The judge argued that Golden Fried Chicken and Oh My Soul Café used “soul” in interpretations and in contexts which are “diametrically opposite to each other”.

“The respondent’s [Oh My Soul Café] mark characterises its business as a lifestyle restaurant supplying goods and services to vegans. Veganism is a philosophy premised on the belief that animals have souls. Hence veganism is a deep commitment to protecting animals by not eating meat or other products derived from animals,” reads the judgment.

It notes that Golden Fried Chicken is well-known in the country for its chicken meals and meat products.

“They are philosophically, ideologically and in reality the very antithesis of veganism. Vegans are discerning consumers most unlikely to confuse or associate ‘Oh My Soul’ with the applicant’s conception of ‘soul’ in whatever form its trademarks appear,” it reads.

What if Golden Fried Chicken decided it wanted to open a vegan eatery and use these trademarks?

“It will have a hard row to hoe in convincing vegans that its meals are genuinely uncontaminated by meat products. Vegans would be anxious if not revulsed by the mere possibility of contamination. Their revulsion would not stop there. Ideologically opposed to killing animals, vegans would consciously avoid patronising the applicant and other meat services,” she states.

She says that Oh My Soul Café is committed to veganism and is therefore likely to distance itself as far as possible from Golden Fried Chicken and its peers. As much as Golden Fried Chicken wants to distinguish itself from KFC, so too does the vegan café want to make clear that it has no link to meat-based food producers.

The judge found that the café was not trying to take on the identity of Chicken Licken and use it to its advantage. The application was dismissed.

Her parting sentiment was that if the Chicken Licken “soul” brand does communicate to its customers a feeling of African cool, pride and tenacity “… then in the spirit of ubuntu, which is the South African conception of humanity and Africanism, the applicant should, in the national interest, encourage rather than restrain the use of ‘soul’ to mend our social fractures and fissures. ‘Success against adversity’ also means allowing small businesses to survive onslaughts by large, economically powerful corporates like the applicant.”

Nevertheless, Golden Fried Chicken had already started pressuring another small food company in Durban to drop “soul” from its menu.

Didee Weare and her daughters, Amy and Jane, started selling health-focused frozen home-cooked meals from their garage in Durban in 2013. Six years later, We Are Food is based in an industrial kitchen in Durban which supplies stores and does home deliveries in KwaZulu-Natal and Johannesburg.

They have been making Soul Bowls since 2016 as part of their “clean eating” range. Over time, they introduced more vegan Soul Bowls and are in the process of making the entire Soul Bowl offering vegan-friendly.

“They started off as our take on the very popular ‘Buddha Bowl’. The reference to Soul Bowls internationally is generally ‘healthy’ and the term has been used since 2014. We loved the idea of the name as it showed our desire to produce a range of meals which is down to earth and can enjoy while nourishing your body and soul,” explains Amy Weare.

However, Golden Fried Chicken was of a different opinion. They argue that “soul bowl” is not a recognised dish, so there is no need for a restaurant to name their dish this. “Bowl” can be used by anyone as it refers to what food is served in, but “soul” sets it apart as unique. Golden Fried Chicken has trademarked this word, so using it means that their rights are being infringed upon.

We Are Food sought legal advice and decided to cede to the request to remove “Soul Bowl” from their website and social media and agree not to use it again.

“We chatted with the team from Oh My Soul as well as their legal representation and although we are fully supportive of their cause and would love to join them in the plight to take on big corporate, we all felt that the financial, emotional and physical toll it would have on us as a company isn’t worth it,” explained Weare.

As Oh My Soul Café heads back to the courtroom to face an appeal they remain optimistic.

“Our customers were over the moon with the decision [in their favour]. People took to social media to display just how happy they were for us. The amount of comments, well wishes and support the café has received has been extraordinary. We have been truly blessed and overwhelmed, and it has given Oh My Soul the motivation and determination to continue to fight for the voiceless and the most vulnerable,” says Duffin.

However, Golden Fried Chicken is not about to have its mind changed about the use of “soul” by other food providers in the future, says Wheeldon.

“The registered trademark rights will be vigorously protected despite the initial finding in the Oh My Soul case. Chicken Licken believes (with respect) that the case is wrongly decided and it will pursue the appeal process.” DM