Two recent judgments highlight the importance of maintaining an effective watching service. Missing an opposition deadline could result in a situation where an opportunist could indulge in deliberately confusing use for a substantial period while a frustrated earlier rights holder was reduced to relying on the uncertainties of the common law to stop the use while seeking cancellation of the offending registration.
The Trademarks Act abolished the system of defensive trademarks and introduced into South African legislation two alien US concepts: dilution and similar goods protection. Although the dilution debate continues, some now regard it as a 'dead letter'. However, protection for similar goods or services is very much alive; but a recent Supreme Court of Appeal decision illustrates the uncertainties raised by this concept.
Original equipment dealers were recently dealt a blow in their long-running battle to prevent the import and sale of aftermarket replacement vehicle parts by the High Court. The judgment removes a significant trade barrier for aftermarket parts dealers which have been subject to threats of design registration infringements from original equipment dealers.
The Counterfeit Goods Act has been widely criticised for its shortcomings in clarity and the sweeping powers that it grants to rights holders. A recent North Gauteng (Pretoria Division) High Court case will inevitably have a bearing on the success of future moves against counterfeiters. The case sounds a warning about the overextension of IP rights with unjust consequences.
The basic position in South African law on the sale of aftermarket parts is that it is perfectly legal, provided that no IP rights are infringed in the manufacture or sale of such parts, and that no misrepresentations are made in their sale. In a recent decision on the issue, the High Court adopted reasoning that was pro-competitive and consistent with the restraint of IP rights to their legitimate limits.
The question of dividing the ownership of a key element of a house mark or group brand goes to the fundamentals of trademark law. If the function of a trademark still includes an indication of origin, then the use of an identical indication of origin by two different parties must be deceptive. Deceptive use vitiates a registered trademark.
Incorporating a geographical name into a trademark is not an ideal way of enhancing its distinctiveness. The Supreme Court of Appeal's judgment in Century City exacerbated uncertainty among owners of trademarks which are also geographical names as to whether their rights could be enforced. However, a recent judgment has illuminated some areas of certainty in this dark realm.
A recent judgment of the Supreme Court of Appeal awarded damages to a legitimate trader that had sought the release of wrongly seized goods by means of an urgent application. The decision is a useful indicator that the court will not tolerate abuse of the Counterfeit Goods Act by rights holders as a means of stifling competition.
With the World Cup now less than a month away, the degree of protection afforded to the Fédération Internationale de Football Association has become a matter of public debate. Many feel that FIFA has exacted rights that far exceed any legitimate trademark concerns and unduly limit the rights of ordinary citizens. Others have hailed these rights as a means of thwarting the ever-present threat of counterfeiting.
A recent Supreme Court of Appeal judgment is bad news for highly descriptive mark owners, as the court emphasized the function of a trademark as a badge of origin. This is particularly satisfying for those who feared that South Africa was becoming unique in its trademark law following a decade-old judgment which held that the badge of origin function of a trademark had been supplanted by an absolute right.
Countries wishing to host the Fédération Internationale de Football Association (FIFA) World Cup must provide a range of guarantees, including FIFA's freedom to use its trademarks. The South African authorities have been at pains to meet and exceed FIFA's expectations, to the unprecedented extent of declaring certain marks relating to the event 'prohibited' within the meaning of the Merchandise Marks Act 1941.
A recent decision underscores the value of a registered trademark and the importance of conducting searches before adopting new marks so as to avoid conflict with marks which may be registered but not yet in use. As a means of providing reasonable certainty to proprietors and potential infringers alike, the registered trademark has an important role - even if certainty remains elusive.
A recent decision of the South African Institute of Intellectual Property Lawyers appears to be another step towards an absolute right in a trademark, a right ‘in gross’ akin to copyright, and makes it plain (if the decision is followed) that a domain name cannot be the same as another’s registered trademark, no matter how pure the motives of the registrant.
From the formation of the Union of South Africa, the national emblem was the springbok antelope and national sports teams were referred to as the Springboks. Only the rugby team now retains the springbok. This update looks at the recent furore over the symbol, including the position of the ultimate repository of rights in a badge as divorced from trading activity, the Bureau of Heraldry.
In South Africa, commissioned authors of photographs have begun to find their work being syndicated internationally by the South African copyright owner without any further compensation and - perhaps even more crucially - without their permission. Some have taken the view that the international rights to the works, which are governed by the Berne Convention, belong to them as the authors of the works.
In Verimark (Pty) Ltd v BMW AG the Supreme Court of Appeal ruled that infringing use of a trademark must be use as a trademark or, in other words, as an indicator of origin. The corollary of this seemed to be the establishment of the ‘fair use’ defence for non-trademark uses of a registered mark, but the court considered the point again in Commercial Auto Glass (Pty) Ltd v BMW AG.
The recent Supreme Court decision in Verimark (Pty) Ltd v BMW AG brings South Africa back into line with EU law by specifically adopting the European Court of Justice's test for infringement - namely, that use of a trademark must create "the impression that there is a material link in trade between the third party's goods and the undertaking from which the goods originate".
The issue of dividing ownership of a brand raises fundamental principles of trademark law. Based on the assumption that a trademark's function of designating the origin of goods has disappeared, its sole function is now to distinguish between goods. If the function of a trademark still includes an indication of origin, the use of identical indications of origin by two entities is inevitably deceptive.
'Naked licensing' occurs where a trademark owner allows a third party to use a trademark without the owner retaining the right to approve the use of the mark in connection with the third party's goods or services. Arguably, this amounts to abuse of law and a loss of consistency and coherence in trademark theory. It may ultimately undermine the very fabric of trademark protection.
South African trademark law is closely related to English law. However, the English tort of 'passing off' is not identical to the South African wrong of 'passing off'. While under English common law a passing-off action may lie where there was an innocent misrepresentation that resulted in confusion, under Roman Dutch common law an innocent misrepresentation - unless demonstrably negligent - is never unlawful.