Friday, 16 February 2018

Afro Leo

Calling all IP Teachers and Researchers in Africa!

Afro Leo is very excited to learn that the World Intellectual Property Organization (WIPO) and the World Trade Organisation (WTO) are organising the first Regional WIPO-WTO Colloquium for IP Teachers and Researchers in Africa.

This WIPO-WTO Colloquium will be held from April 9 to 12, 2018 followed by IP Scholars Africa Conference, hosted by University of South Africa (UNISA) on April 13, 2018, both held at UNISA in Pretoria, South Africa. Here is the link with more details:

The Colloquium for IP Teachers and Researchers in Africa will:
  • provide IP academics in the region with a greater understanding of current international developments in IP law and policy, and the status of WIPO and WTO agreements and ongoing work with bearing on IP, focusing on current activities of particular relevance to the African context; 
  • map existing IP teaching and scholarship in Africa, promote cutting edge research focused on the region, and encourage the publication of high quality research as a means of building domestic capacity for adapting and applying policy options within the framework of international IP standards and the broader legal and policy context;
  • provide a forum to build academic collaboration, including on current teaching methodologies in the area of IP law, with a view to strengthening collaborative networks and academic exchanges across Africa so as to build sustained policy and legal capacity in African developing countries; 
  • identify how WIPO and the WTO can improve their support for teaching and research capacity on international IP law in Africa, on IP teaching, academic exchanges, and a stronger network of African IP scholars and teachers; and
  • prepare for the publication of presented research papers in the "WIPO-WTO Colloquium Papers: 2018 Africa Edition".

The Colloquium will be linked with the Works-in-Progress Conference “IP Scholars Africa” hosted by the SARChI Chair, UNISA, in order to:

Provide a platform for IP teachers and researchers selected by WIPO, the WTO and UNISA to present their research work in progress to a larger audience of experts at the Conference.  WIPO and WTO officials will participate in plenary panels to offer information about work in the WIPO and WTO, including on areas of capacity building and technical assistance, to a larger audience of IP scholars in Africa and beyond.
  • Offer the opportunity for WIPO and WTO to identify IP teachers and scholars in the region and create a more comprehensive database of IP scholars and their institutions, including for their future contribution to the delivery of technical assistance in the region. 
For more information please contact Karen Zaayman at zaaymcj@unisa.ac.za or wipo-wto-ipsacolloq@wipo.int


Scholarships

Between 15 to 20 scholarships are available from WIPO and the WTO for IP teachers and researchers preparing a paper for publication in the 2018 Colloquium Papers Edition.

Scholarships cover: return ticket; fees related to the Colloquium; full board and lodging.

Successful applicants for WIPO and WTO scholarships will be notified by the WIPO Academy and the WTO Intellectual Property, Government Procurement and Competition Division. Thereafter, they will be provided with relevant information, including travel arrangements.

Kindly inform your colleagues and friends who qualify to participate in the Colloquium and IP Scholars Africa to apply online. All applications are done online: WIPO Academy. Deadline for applications is: February 25, 2018.



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Wednesday, 7 February 2018

Afro-Corne

SOUTH AFRICANS: 6 MARCH but be quick


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Friday, 2 February 2018

Isaac

Net Neutrality is dead. Long live Net Neutrality!

Our dear readers are probably by now aware that the United States Federal Communication Commission (FCC) voted (along party lines, incidentally) to end net neutrality rules put in place during the Obama presidency. See here, for example.

The decision was highly controversial, with over 20 million comments submitted during the public comment period. Most executive branch actions in the US attract far less interest. There are, however, reports that a large percentage of those comments were "fake" - e.g., not from verifiable sources or from duplicate sources.

Given that the US is a major driving force behind worldwide internet policy, does this decision mean the end of net neutrality as we know it?  Not so fast!  There may be hope yet.

Much of the governmental structure in the US is devolved to the individual States, and states can often direct national policy if they act with some degree of unity. It was with great interest to this blogger, then, when certain states began pushing back on the decision of the FCC. For example, in January, six states (including, not surprisingly, California and New York) introduced bills into the state legislatures that would require net neutrality for operators and activities in those states. In addition, the attorneys general from 22 states have sued the FCC to block the change in the net neutrality rules.

What would happen if, say, California (with a population of 40 million people and a "GDP" of $2.5 trillion, which would make it the 8th largest economy in the world if it were a country) passes a net neutrality law?  It is likely possible (technologically speaking) to have different positions on net neutrality in different states, but is such a situation politically or socially acceptable? Does the adage "as California goes, so goes the US" apply here?

California leads the nation in other areas such as climate change mitigation policy and petrol consumption standards, so it is not hard to imagine that the national rules on net neutrality may be dictated to a large degree by the actions of California legislators.

2017 saw the death of net neutrality. But 2018 will see quite a fight for its rebirth!  We will be watching this space closely...
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Wim Alberts

OFFENSIVE TRADE MARKS: WHAT EVERYONE HAS BEEN WAITING FOR*  



In a previous posting by Darren Olivier here, the decision of the American Supreme Court in In re Tam, case 2014-1203 was discussed.  Section 2(a) of the Lanham Act was declared unconstitutional, being perceived as an obstacle to the registration of the mark THE SLANTS.  The latter was seen as referring to people of an Oriental descent.  The case related to the word “disparage” in said section, which reads as follows:



“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—



(a)  Consists of or comprises immoral, deceptive, or scandalous matter;

or matter which may disparage…”



The important question left open was the Constitutional status of the phrases “immoral” and “scandalous”.  This question has not been answered yet by the Supreme Court.  However, the authoritative Court of Appeals for the Federal Circuit delivered a ruling in this regard ten days before Christmas in In re: Erik Brunetti Case 2015 – 1109 dated 15 December 2017 (available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1109. Opinion.12-13-2017.1.PDF).  Rust keeps long hours  – seemingly these judges also do.



JUDGMENT



The facts simply were that an application for FUCT in relation to clothing was refused by the Patent and Trademark Office on the basis of being immoral or scandalous, the mark being the past tense of the verb “fuck”.  The matter came before the court following an appeal from the earlier ruling of the Trademark Trial and Appeal Board.  Based on the examining attorney’s Google Images search results, the Board stated that Mr. Brunetti used the mark in the context of “strong, and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny..” The court considered two issues.



1.  The mark is vulgar and therefore scandalous



The court quoted from the examining attorney’s statement “…it [the mark] is “recognized as a slang and literal equivalent of the word ‘fucked,’” with “the same vulgar meaning.” (page 5).  The court made reference to numerous sources, including Wikipedia and the Urban Dictionary.  In this regard the court remarked that “For ex parte proceedings, the Board permits the examining attorney to consider materials from the Internet, having adopted a ‘somewhat more permissive stance with respect to the admissibility and probative value of evidence’.” (page 7). 



Mr Brunetti claimed that in over twenty years of operation, he received only a single complaint about his brand name.  This argument was rejected, as possibly relating only to a specific segment of the market.  “That does not satisfy his burden on appeal, however, to establish that the Board lacked substantial evidence for its determination that a ‘substantial composite’ of the American public would find the mark vulgar.” (page 8).  The conclusion reached by the court was that the mark is indeed vulgar (page 9).



2.   Section 2(a) is unconstitutional



The crisp question stated by the court was what the impact of the Tam decision on Mr. Brunetti’s case is, specifically whether there is any basis for treating immoral and scandalous marks differently from disparaging marks.



At the outset the court referred to certain constitutional principles (page 13) that will determine how the restriction in section 2(a) will be classified.  The first principle is “that the government is said to restrict speech based on content when ‘a law applies to particular speech because of the topic discussed or the idea or message expressed.’ Content based statutes are presumptively invalid. To survive, such statutes must withstand strict scrutiny review, which requires the government to ‘prove that the restriction furthers a compelling interest and is narrowly tailored to achieve that interest.’ United States v. Playboy Entm’t Grp., Inc 529 U.S. 803, 813 (2000)… (“If a statute regulates speech based on its content, it must be narrowly tailored to promote a compelling Government interest. If a less restrictive alternative would serve the Government’s purpose, the legislature must use that alternative.”).



The government conceded that section 2(a)’s bar on registering immoral or scandalous marks is a content-based restriction on speech (page 14).  It also did not assert that the immoral or scandalous provision survives strict scrutiny review.  Instead, it said that the First Amendment is not indicated because trademark registration is either a government subsidy program or limited public forum. Alternatively, the government argued that trademarks are commercial speech implicating only the intermediate level of scrutiny set forth in the famous Central Hudson case. Under a less exacting degree of scrutiny, the government argues the immoral or scandalous provision is an appropriate content-based restriction tailored to substantial government.



Suppressing the urge to delve deeper into American constitutional jurisprudence, it probably suffices to state that in the remainder of the judgment these arguments were considered and all rejected.  Some selected references may be constructive though:



-  Although commercial in nature, trade marks (even though scandalous or immoral) might indeed have an expressive content (page 26).  Examples are FUCK CANCER, FUCK RACISM, FUCK HEROIN, DEMOCRAT.B.S, AND REPUBLICAN B.S.



-  “Supreme Court precedent makes clear that the government’s general interest in protecting the public from marks it deems ‘off-putting,’ whether to protect the general public or the government itself, is not a substantial interest justifying broad suppression of speech. ‘[T]he fact that society may find speech offensive is not a sufficient reason for suppressing it.’” (page 31 – with reference to the well-known decision in Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 (1988) 55).



-  “In Tam, the Court acknowledged that it is a ‘bedrock First Amendment principle’ that “Speech may not be banned on the ground that it expresses ideas that offend.’” (paragraph 31).



-  The inconsistent registration of marks, for instance allowing DIARY OF A MILF, BACKROOM MILF, MUTHA EFFIN BINGO, and IF WE TOUCH IT, IT’S FN GOLDEN, but refusing similar marks was mentioned (page 36)



The court then held that the bar in section 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.



DISCUSSION



Does this case have any significance for our law? Our Constitutional Court judges have been known to dip their toes into the waters of American constitutional law, so the judgment can have value (with the caveat that our constitutional law is of course not on all fours with the American system – see, specifically, S v Mamabolo [2001] ZACC 17 paragraph 40).  The probable area of application is of course section 10(12) of the Trade Marks Act which states that a mark that is “…likely to give offence to any class of persons” shall not be registered as a trade mark.  An example of the exercise of this power is the refusal of a mark which means nothing, to wit, S FOKOL (trade mark application number 2015/12311 in class 25 dated 13 May 2015).



Not much is left on the field, apparently, in view of the Laugh It Off decision (Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International [2005] ZACC 7).  The point here is that the Constitutional Court stated (paragraph 55) that:



“It is appropriate to observe that the mere fact that the expressive act may indeed stir discomfort in some and appear to be morally reprobate or unsavoury to others is not ordinarily indicative of a breach of section 34(1)(c). Such a moral or other censure is an irrelevant consideration if the expression enjoys protection under the Constitution. Of course freedom of expression is not boundless but may not be limited in a manner other than authorised by the Constitution itself such as by the law of defamation. The constitutional guarantee of free expression is available to all under the sway of our Constitution, even where others may deem the expression unsavoury, unwholesome or degrading. To that extent ordinarily such meaning should enjoy protection as fair use and should not amount to tarnishment of the trade marks.”



In other words, for our purposes, a moral censure is irrelevant.  The position has in fact been stated to be (Devenish “We are amused: Laugh It Off Promotions CC v SAB International (Finance) BV t/a Sabmark International 2005 SALJ 792) that “Therefore, even express vulgarity and coarseness may indeed in certain circumstances be legitimate vehicles for the conveyance of ideas.” (page 802).  Would FUCK CANCER be an example here?  Notably though, it was said, in a constitutional case predating the Laugh It Off ruling, that “The rest of the prohibitions in clause 2(a) deal with the regulation of material that is indecent, obscene or offensive to public morals… There is no doubt that these are important areas with which the government, or the relevant regulatory authority, might be expected to concern itself…  They implicate important competing rights as well as the government’s interest and duty to protect those rights.”  (Islamic Unity Convention v Independent Broadcasting Authority [2002] ZACC 3 paragraph 50).  This decision however “merely” appears as two footnotes (44 and 54) in the Laugh It Off judgment, which can only imply that the Constitutional Court differentiates between offence in a broadcast, vis-à-vis a trade mark context. This interpretation would be in line with the reasoning of the Brunetti decision (page 34).



Returning to the Laugh It Off ruling: The Constitional Court’s above earlier statement on vulgarity was of course made in the context of the alleged infringement of a mark, an issue of use thus.  When the above dictum of the court is juxtaposed with the issue of registration, it would seem that the same freedom should apply.  The Registrar would be bound by the Laugh It Off case.  To be blunt, words such as FUCT or MILF would be registrable in terms of our system.  It could be the issue of distinctiveness, and not moral considerations, that might be problematic.  This aspect did not receive any attention though in the Brunetti case.



To take the matter one step further, what is the position where a famous mark is tacked onto a “vulgar” word?  In the following examples “X” is a famous airline, and “Y” a famous hamburger chain.  What approach should be followed towards the use and/or registration of the marks FUCK X’S SERVICE, and Y MILF BURGERS, both appearing on t-shirts being sold.  An apparent objection might be that in both instances there are “nude” use of the marks, meaning no apparent message or idea are conveyed.  The latter seemingly influenced the Laugh It Off court.  So Judge Moseneke stated that “What is being sold is not another beer or other product under the guise or on the back of the registered marks. What is being sold is rather an abstract brand criticism.” (paragraph 62).  Sachs J characterised the use concerned as follows (paragraph 102):



“The objective of the enterprise, as clearly understood by all those involved, was to get a message across. The sale of the T-shirts was necessary for sustainability. This was not a commercial activity masquerading as a free speech one. To say that the message could have been conveyed by means other than the use of the trademark is to miss the point of the parody. The message lies precisely in the dislocated use of the trademark. The challenge is to the power of branding in general, as exemplified by the particular trademark. It is not to the particular beer as such. It should be stressed that the question is not whether the parody succeeds in hitting the mark. What matters is that it was part of a genuine attempt to critique the status quo in our society. The scales come down unequivocally on the side of Laugh it Off. In the felicitous phrase of an American judge, the evidence shows that in the present matter the parody was a take-off, not a rip-off, and the interdict should accordingly not have been granted.



The cynical observer might say that the activities of the above party exactly amounts to “a commercial activity masquerading as a free speech one.”  Leaving that aside, one might argue from the above that both judges’ opinions are based on the idea perceived to be conveyed by the parody.  From this point of view the parodies in our examples would not have constitutional protection, carrying no particular ideological message - bearing in mind also the above quotation from Devenish that refers to “ideas”.  But parodies seem to be pervasive.  Interestingly, Judge Sachs stated (paragraph 81) “Thus, the fact that the trademark image is central to the parody does not make it automatically or even presumptively liable for restraint.”  Arguably, a “parody” shorn of a message could consequently also be protected.  



One must also note, importantly, that there was no “idea” in the Brunetti ruling, the whole judgment rested on a single (unsavoury) word.  If one adds that the requirement of “substantial economic detriment” (paragraph 56 of the Laugh It Off decision) will probably also find application, constitutional protection for the use/registration of the above examples might seem not to be so improbable.  Or would the Laugh It Off case only be relevant for instances of use and not registration?  In the former instance, can X and Y then argue that the other parties’ applications contain marks in relation to which the applicant for registration has no bona fide claim to proprietorship (section 10(3) of the Trade Marks Act), their marks being wholly contained in the applications? Or section 10(7) that the application for registration was made mala fide?



CONCLUSION



When one contemplates the place the Brunetti judgment will occupy in trade mark jurisprudence henceforth, and its import apropos freedom of expression, one cannot but make the following observation.  This is the vast difference between a situation involving t-shirts protesting a particular government’s policies, and a t-shirt with the word FUCT on it being sold at a flea market.  Freedom of expression’s meaning is, on a reasonable interpretation, stretched immeasurably.  The outcome of the Brunetti decision might be technically correct, in a mechanical way, but it remains lamentable.  It is profound in this context to note the following statements of the court at the end of its judgment (page 41):



“The trademark at issue is vulgar. And the government included an appendix in its briefing to the court which contains numerous highly offensive, even shocking, images and words for which individuals have sought trademark registration. Many of the marks rejected under § 2(a)’s bar on immoral or scandalous marks, including the marks discussed in this opinion, are lewd, crass, or even disturbing. We find the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace. There are, however, a cadre of similarly offensive images and words that have secured copyright registration by the government. There are countless songs with vulgar lyrics, blasphemous images, scandalous books and paintings, all of which are protected under federal law. No doubt many works registered with the Copyright Office offend a substantial composite of the general public. There are words and images that we do not wish to be confronted with, not as art, nor in the marketplace. The First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”



POST SCRIPT


Further to the above quotation, interestingly, the word “fuck” was used, in terms of mainstream films, the most times (569) in the Wolf of Wall Street (https://en.wikipedia.org/wiki/List_of_films_that_most_frequently_use_the_word_%22fuck%22).


* Please check sensitivities at the door
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Wednesday, 27 December 2017

Wim Alberts

The practical effect of the ClearVu SCA disclaimer decision

Last week I posted on the Supreme Court of Appeal's decision that is likely to firm up South Africa's approach to disclaimers and their unique endorsement known as an admission.

The reasoning of the SCA is, with respect, convincing, and might now bring down the curtain on the long-running CLEARVU dispute.  What does the judgment mean practically?  I asked fellow blogger Darren Olivier who acted for M-Systems and has worked in countries with vastly different approaches to disclaimers, what he thought this all means, and whether he still prefers the UK system where the Registry does not routinely call for disclaimers:

WA: Naturally “clear” and “view” separately were disclaimed, but does this also mean that no one may use the composite mark CLEAR VIEW?

DO: My reading of the judgment is that only genuine descriptive use of “clear view” e.g to describe the intended purpose of a fence in a way that is not unlawful (e.g passing off) is covered by the admission endorsement. In other words only such use of CLEAR VIEW would not clearly be an infringement of the registered mark.

WA: If one applies the above exposition of Webster & Page, if VU is the phonetic equivalent of “view” and CLEAR is disclaimed, the use of CLEAR VIEW is in fact also disclaimed in practical terms?

DO: Yes, that is correct if you apply the logic in Webster & Page and it would mean in practical terms that any use of CLEAR VIEW could not be tolerated i.e. not just genuine descriptive use. My sense though is that there remains a practical distinction between an admission and a disclaimer and therefore one should not equate a disclaimer with an admission.

However, if one concludes that CLEAR VU or CLEARVU is a composite mark consisting merely of descriptive words or their phonetic equivalents, then the logic in Webster & Page means that CLEAR VU or CLEARVU should have been rejected as a trade mark. This is what we argued in the lower court but since the M-Systems went in liquidation, we were not able to argue it before the SCA.

WA: You mean that Cochrane Steele should not have been able to then register its CLEAR VU/CLEARVU trade mark at all?

DO: Yes, unless, of course, they could establish a secondary meaning though use of the mark as a trade mark. Our argument was that they failed to establish this on the papers. The lower court disagreed.

WA: So, any combination of a word – except “clear” – with VU is thus permissible?

DO: Yes, that is correct, provided the use is not passing off or unlawful in some other way. The rights to CLEARVU are therefore quite narrow which is communicated by the endorsements.

WA: In applying the above propositions practically sight should not be lost of the decision in Slavin's Packaging (Pty) Ltd v Space Case Products (Pty) Ltd where SPACEY was held to infringe the disclaimed SPACE and CASE components of the mark. Do you agree with that?

DO: I do, when comparing the marks, the entire marks should be compared taking into account the disclaimed elements. This is what will give the CLEARVU mark its strength as a registered mark. However, the endorsement are not insignificant for they seek to limit and more clearly define scope of protection of the registered mark.

WA: Having worked in the UK system and after being involved in this case, do you prefer a system including disclaimers or one without?

DO: This case has changed my view on disclaimers. I held the view that disclaimers and admissions were rather cumbersome, unnecessary and often created more uncertainty in the scope of the protection of a registered trade mark. They also made the registration process more expensive and lengthy. The UK system took this all into account and all but abandoned the practice in the late 90s. The EU did the same although it is still possible to endorse trade marks under both systems. Both systems are however, very efficient and I enjoyed working with them.

This case could have provided a moment to argue that disclaimers/admissions should only be called for in very limited circumstances (disclaimers are discretionary and S15 of the Act is clear on that) and bring our practice more in line with Europe. The case was not argued in this way but it would have made for interesting debate. 

I think what swings it for me in supporting disclaimers now, is that in a developing country like South Africa where access to IP is still limited, unfortunately, to those in the know and often those with means, the upshot is that the SME may be prejudiced. Put differently, those with means would more easily be able to exploit the scope of protection in a registered mark made up of descriptive components, relative those without means. In this case for example, M-Systems (sadly in liquidation) has done a favour for other competitors which is arguably good for competition and the consumer. The flip side is that the registration process does take longer and can be more expensive.

WA: Cochrane’s case was that this opposition was vexatious, prompted by the earlier adwords case and to prevent them from using the trade mark to sue M-Systems for infringement (which may have been easier to show in the adwords case). How do you respond to that?

DO: I do not believe that mere bidding on an identical trade mark without more is trade mark infringement so I do not believe that Cochrane would have prevailed in an adwords case based on a registered trade mark. I am sure that they feel differently, perhaps some of my colleagues do as well.

It is probable that this opposition may not have occurred had the adwords case not commenced but that does not mean it is vexatious, and the judgment shows that. M-Systems was a genuine competitor to Cochrane Steele in a highly competitive industry.

WA:……yes, in conclusion it seems disclaimers and admissions will form part of our system for some time. The legislation is, after ‘a deal’ between the registrar of trade marks and the applicant, without which there would be no trade mark [where trade marks are formed of descriptive components].  As long as the deal is balanced.
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Friday, 22 December 2017

Afro Leo

THE CLEAR VU TRADE MARK SAGA: THE FENCING ENDS IN BLOEMFONTEIN

 


BACKGROUND
 
The legal battle regarding product names in the fencing industry might at last be over. This is the impression one gets from the latest episode in the CLEARVU trade mark war, being the ruling of the Supreme Court of Appeal (SCA) in an opposition matter involving the parties, reported here. 
 
The order of the lower court was:
 
1.1. The registration of this mark shall give no right to the exclusive use of the word (sic) “clear” and “view” separately and apart from the mark;
1.2. The trademark registrant admits that the registration of this mark shall not debar others from the bona fide descriptive use in the course of trade of the words “clear view” and “view”.”
 
Readers will recall that Cochrane Steel had sued M-Systems for unlawful competition for bidding on the mark CLEARVU as an adword. Cochrane Steele lost, setting a precedent that the mere bidding on a competitor's mark as a keyword without more (eg it appearing in the ad text) is not unlawful competition. The High Court case is well covered by this blog and you can view those summaries here, herehere and on CNBC Africa, here.  In the Supreme Court of Appeal, decision here, M-Systems successfully defended the appeal by Cochrane Steel creating clarity that keyword bidding on a competitor's trade mark (on its own) is not passing off or unlawful competition in South Africa.
 
 
Cochrane Steel also lodged a complaint before the Advertising Standards Authority, which was rejected on the basis that the adwords do not constitute ”advertisements”, a finding set out here.

 
The scene then moved back to the High Court, dealing with the registry's acceptance of Cochrane Steel's CLEARVU trade mark without any disclaimers or endorsements in respect of CLEAR, VU and/or CLEAR VIEW. M-Systems also claimed that the mark should not have been accepted because it described the intended purpose of a fence, namely one that provides a clear view, and that the evidence on file did not support a finding that the mark had acquired a secondary meaning.  In the judgment, discussed here, the court ruled in favour of both parties on some aspects, but significantly exclusive rights to “clear” and “vu” had to be disclaimed.  This discussion deals with the appeal on this ruling.
 
 
THE SCA OPPOSITION JUDGMENT
 
 
Cochrane Steel applied for the registration of the mark CLEARVU in:
 
 
1. Class 6 (in respect of non-electric cables and wires of common metal; metal fences; metal mesh; pipes and tubes of metal)
 
 
2. Class 37 (in relation to building, construction, repair and installation services.
The opponent was of course M-Systems.
 
The ground of opposition was that the mark was not registerable in that:
 
 
1.  It consists exclusively of an indication which may serve in trade to designate the kind, quality, intended purpose or other characteristics of the goods or services (s 10(2)(b) of the Trade Marks Act 194 of 1993;
 
 
2.  It is not capable of distinguishing the goods and services for which it is to be used (ss 9(1) and 10(2)(a) of the Act).
 
 
One question raised is how far the misspelling contained in the CLEARVU mark can go.  The following “view” on the situation in the market is instructive:
 
 
“[8] M-Systems, in its objection to the mark, supplied material from websites operated by a number of other companies within the security barrier industry in which they use the words ‘clear’ and ‘view’ in describing their fencing products. One company is called C-Thru Fencing which equates to fencing through which one has a view. Another competitor, Betafence, offers products called ‘Betaview’. Trellidor, also referred to as a competing company produced a product called ‘Trellidor Clear Guard’. Trellidor describes its products as ‘security screens that provide a clear view’. They go on to say that their products enable users to ‘enjoy the view without feeling vulnerable’, ‘allow unobstructed views of the outdoors’, ‘appear to be invisible while helping to protect against unwanted intruders’ and ‘provide security without detracting from the views or aesthetics of the premises’. Clear View Security Solutions, yet another competitor that sells a range of products which they describe as ‘clear security solutions’, including ‘clear bars’, ‘clear armed bars’ and ‘clear gates’. It explains on its website that all of its products ‘ensure that no light or view is lost’.”
 
 
To use the word, clearly, the concept of a see-through product is in wide use in the industry. 
 
 
The court referred to section 15 of the Act, and various decisions dealing with the issues of disclaimers and admissions.  It was mentioned that the use of disclaimed matter cannot amount to infringement (paragraph 13).  Mention was also made of the unique practice of entering admissions, specifically where misspellings of words were concerned (paragraph 14).
 
 
The court found particular guidance in the Distillers case:
 
“[19] In determining whether a discretion should be exercised in favour of the entry of  a disclaimer and admission, it is necessary to have regard to Distillers Corporation (SA) Ltd v S.A. Breweries Ltd & another; Oude Meester Groep Bpk. & another v S.A. Breweries Ltd 1976 (3) SA 514 (A). There this court was considering, in relation to an application for an entry for disclaimers, the composite trade mark ‘Oude Meester’, which had undoubtedly become distinctive…
 
 
The court, whilst acknowledging that the mark ‘Oude Meester’, by its use as a whole had become distinctive, held that such use does not ‘ordinarily or necessarily mean that Meester per se has thereby become distinctive’. It found that the court below had accordingly correctly entered disclaimers.

 
[20] In Distillers, Trollip JA also had to consider an order similar in form to para 1.2 in the present case. Trollip JA stated that what was there under consideration was not a disclaimer in the usual form. He had regard to the contention on behalf of one of the parties that it was not a disclaimer, but rather an ‘admission’. Noting that the entry of admissions was a peculiarly South African practice, particularly where the trade mark contains words that are regarded as being reasonably required for use in the trade, he stated that the purport or effect of admissions ‘does not appear to be entirely clear; and it is difficult to understand on what basis the distinction between disclaimers and admissions is drawn’. He proceeded to construe the ‘admission’ as a disclaimer and in that regard said the following:

 
‘That construction does not, in my view, do any violence to the wording or effect of the entry. For by not debarring others from using Meester, the entry in effect disclaims Distillers’ right to the exclusive use thereof.”
 
 
Applying these dicta (paragraph 21), the SCA stated that “the “VU” in the composite mark “CLEARVU”, is a deliberate misspelling of the ordinary word “view” and is understandable in light of the nature of the product and what it intends to convey.” The argument of Cochrane that it does not constitute a misspelling of the ordinary English word “view”, but that it is a “coined word which just happens to be the phonetic equivalent of the ordinary English word ‘view’ is to strain to avoid the implication that commonly, admissions are entered when there is a misspelling of a word and to seek a monopoly that extends beyond that which is acceptable.” Also, as per Webster and Page South African Law of Trade Marks para 9.20 at 9-17, service issue 19, “the phonetic equivalent of a non-distinctive word is itself non-distinctive and it would seem to follow that if the word itself is one that ought to be disclaimed then its phonetic equivalent should also be disclaimed.”
 
 
In paragraph 22 the court stated that neither Cochrane, nor any other trader, is entitled to appropriate exclusively the ordinary English words “clear” and “view”, which, in effect, constitute the composite mark. In addition, those words are commonly used descriptively in relation to fencing products.
 
 
The conclusion of the SCA was to accept the order of the court a quo, but it was stated though that the words “the trade mark registrant admits” must be deleted.
 
In my next post, I interview fellow blogger Darren who represented M-Systems to find out his thoughts on what this all means, on a practical level.
 
 
Prof Wim Alberts
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