Wednesday, 15 September 2021

Afro Leo

SOUTH AFRICA: HIGH COURT STILL NOT QUITE GETTING IT RIGHT

In the recent case of iCollege (Pty) Ltd (iCollege) v Excellence Skills Development and Mentoring (Expertease Skills) and ZA Central Registry NPC (Domain Name Registry), iCollege (Pty) Ltd sued Expertease Skills for trade mark infringement and passing off for their use of the mark ICOLLEGE, and requested the transfer of the domain name icollege.co.za from the Domain Name Registry. The citation of the Domain Name Registry is a mechanism for enforcement of the judgment, and they did not take part in proceedings.


It is apparent from the decision that the High Court, in dismissing the claim, has still not got to grips with the proper application of the trade mark infringement tests, and this post will focus on these errors and omissions and once again appeal to the court and legal practitioners to adopt and follow the step-by-step approach used in Europe (see earlier posts here, here and here) as it will help reduce errors in application. The majority of the decision surrounds the trade mark infringement claim under S34(1)(a) and so this post focuses on that.

The claim for passing off and Section 34(1)(b) and (c) are not dealt with in any detail and are abruptly dismissed as the Section 34(1)(a) claim was not successful, albeit that there are also obvious errors in this part of the judgement (for example at para 69 it states – “The test for passing off with regards to section 34(1)(c) is set out by the court in Laugh It Off Promotions”).

Facts and findings

iCollege provides accredited and skills-based training with the Sector Education and Training Authority (SETA) at its 17 campuses nationwide and at an e-learning centre. It is the registered proprietor of two device trade marks for iCollege covering education and training services applied for in 2013 and 2018. The 2018 mark is the colour mark as indicated in the table below.

At para 4 the judge makes a finding that iCollege has made “continuous and extensive use” of the trade mark since 2013.

Expertease Skills is an internet-based business that provides E-Learning courses to consumers located worldwide for international, technology vendor specific information technology certifications. It uses the marks illustrated in the table below.


 

In dismissing the iCollege’s the High Court in Pretoria made the following findings:

Comparison of the services (paras16-26)

“From the papers it would thus seem that the main similarity between the business of the applicant and the respondent is merely the fact that both render services in relation to “education and training services” (I have already pointed out that the applicant’s trade mark is registered in relation to, inter alia, “education and training services.”) However, in my view, it does not follow that the mere fact that both parties render “educational and training services” would mean that they in fact render the same or similar educational and training services, nor does it follow that the target market for these services (the potential notional customer) is the same (para 26). This sentiment is repeated at para 39.

Whilst the judge is correct that the two parties do not provide the same services, she confuses the test of passing off for that of trade mark infringement. For trade mark infringement purposes the services are identical in that they are both education and training services or, put differently, the services covered by iCollege’s trade mark are wide enough to cover those in respect of which Xpertease Skills uses their trade marks. This is a critical error.

Comparison of marks (paras 48-55)

Trade mark infringement was pleaded under all provisions of Section 34 and the test is the same for each of the infringements contemplated by that section. What is required of the judge is to make finding as to whether the marks are identical, similar or different. If the marks are different, the test stops there – there can be no infringement.

In this case, as Xpertease Skills uses a different mark to that which is registered, the marks are obviously, not identical. The question then is if they are not different, they must be similar and what that level of similarity is. Importantly, for this part of the test, the judge should not determine whether there is a likelihood of confusion. That would be premature as it involves the interplay of the other parts of the infringement tests e.g. similarity/identity of services, notional consumer, strength of the earlier mark etc.

Para 48-55 unfortunately misapplies the test for similarity of the marks and conflates it with other aspects of the tests for infringement. This makes it difficult to determine what the court’s conclusion is on the similarity of the marks. The test is also restricted to a comparison on the logo marks in use and appears to ignore the fact that Xpertease Skills also use the word mark on its own. This would reduce visual difference in the marks.

At para 50 the judge finds that “but for the word iCollege / ICOLLEGE, the two marks are not, in my view, similar. The ultimate test however is, as stated by the court in Cowbell, whether, on comparison of the two marks, there is a likelihood of confusion”. Perhaps by this the judge is saying that the marks are only similar in that they include the word iCollege, and that the rest of her analysis focusses on that. However, even this liberal reading of the reasoning it does not make sense because it fails to then draw on the conclusion on the similarity/identity of the goods in assessing the likelihood of confusion.

There are also other errors such as the determination of “material link” para 54. The term material link as used in the context of the Verimark case cited in the judgement, and in Europe is there to determine whether the use of the trade mark by the alleged infringer is trade mark use (as opposed to pure incidental or descriptive use) and in the dilution test. In this case it is trite that both parties are using iCollege as a trade mark and so the concept of ‘material link” under S34(1)(a) is met. It is use of a mark by the alleged infringer in the course of trade in the provision of educational services.

Notional Consumer (paras 56 – 65)

The penultimate finding under trade mark infringement is at para 63 and illustrates that if there is a problem in the application of part of the test, it perpetuates itself:

“ Apart from the fact that the applicant placed no evidence before the court to substantiate a likelihood of confusion within the context of this matter, I am not persuaded that any customer would be confused into believing that the educational services presented by the respondent are somehow linked to the applicant. I have already pointed out that there are material differences between the content of the courses presented by the parties as well as their respective teaching methods. The common element of the marks (“college” or the composite mark “icollege”) is, at best, weak in that it is, as already pointed out, descriptive of the educational vehicle both parties use to offer their educational services. The mark does not describe the applicant’s or respondent’s educational services. In fact, the trade mark does not tell the potential customer anything about the product. As such, the trademarks do not serve as a badge of origin of the educational services it presents. Adding the prefix “i” (composite mark) also does nothing more than to refer to the internet.”

The evidence to substantiate a likelihood of confusion for trade mark infringement purposes is through the application of the applicable test. Whilst it may be said that more evidence could have better served iCollege’s case, there cannot be said to be “no evidence”  (for example, iCollege’s registration certificates are evidence of their rights). Furthermore the conclusions on likelihood of confusion are more appropriate to a passing off test.

The correct conclusions based on what is in the judgement in this case, appear to be better summarised as follows:

a.) the marks are similar if not highly similar in that they consist of the identical components “iCollege” which are a material part of the marks in the sense that they are the only verbal component, and visually prominent. They are also conceptually identical insofar as a meaning can be ascribed to them. The judge does conclude that the marks are at least similar.

b.) the services are identical in that those offered by Xpertease Skills are covered by the trade mark registrations. The judge acknowledges this but appears the be confused by the test of passing off which compares services in use.

c.) the marks have been “continuously and extensively” used (concluded in para 4) but are not well known. The marks consist of the descriptive words “college” and “I” for “internet” which are not strong components of the mark.  Portions of the registered mark(s) (eg COLLEGE and I meaning INTERNET) is/are therefore relatively weak mark inherently. However, as iCollege’s marks has/have been used over almost ten years it has elevated their distinctiveness. In layman’s terms, not as strong as the iPhone mark but still a protectable mark and, of course, it is registered. On balance one may say that that iCollege’s mark is deserving of ordinary protection.

d.) the consumer (of educational and training services) is an ordinary consumer including those seeking educational services online. Those seeking educational services online may have a heightened level of awareness referred to in YuppieChef and may be more discerning.

e.) there is trade mark use of iCollege by the alleged infringer (as opposed to non trade mark use or incidental use). It is unauthorized.

So, based on the judgement, we have unauthorised trade mark use of a similar (if not highly similar) mark applied to identical services covered by the registered trade mark offered to an ordinary consumer seeking educational services online, who can be discerning.

In order come to the finding that the court did, it would need be convinced that there are material differences in the marks or that the consumer is so discerning that they would not likely be confused. I am not convinced that there are material differences in the marks or that the consumer is that discerning, but then who am I. My point is that had the court  applied the test in this way (or perhaps had the papers have been pleaded in this way), the court would not make the mistakes highlighted above, be less open to an appeal and, if there was an appeal, the basis for the appeal would be clearer. It would make for greater clarity, expediency and clarity all round.

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Friday, 16 April 2021

Chijioke Ifeoma Okorie

World IP Day 2021 Free Workshop Event - IP & SMEs: Taking your ideas to market

In celebration of World Intellectual Property Day 2021, the Centre for IP Law at the University of Pretoria together with Adams & Adams Attorneys will host a free Workshop on 28 April 2021.

The theme for World IP Day 2021 is IP & SMEs: Taking your ideas to market. To that end, the free workshop will focus on how small- and medium-sized enterprises can benefit from using the IP system and other topics such as IP valuation, IP finance, IP infringement and IP licensing. There will be a free IP consultation in the form of a Q&A session for SMEs and individuals interested in learning about the best ways to take their ideas to market and protect their IP assets.


Confirmed speakers so far include:

Pieter Visagie, partner at Adams & Adams specialising in the drafting of patent specifications and the filing and prosecution of patent and designs applications both locally and abroad.

Dr Chijioke Okorie, lecturer and researcher at Centre for Intellectual Property Law, University of Pretoria. Chijioke is a copyright law expert and the author of the book, Multi-sided Music Platforms and the Law: Copyright, Law and Policy in Africa (Routledge, 2020).

Eugene Honey, Partner at Adams and Adams, has specialised in Trade Marks and Copyright matters, as well as Commercial IP matters including Franchising and Licensing, IP valuations, IP Due Diligence and IP portfolio management since 1991. He acts for many local and international trade mark Proprietors, Licensors and Franchisors. He has been on the EXCO and has been the legal advisor to the Franchise Association of South Africa since 2002.

Lisa van Zuydam, Senior Associate at Adams & Adams, is a qualified attorney and trade mark practitioner specialising in litigation relating to trade marks, copyright, passing-off, unlawful competition, domain name disputes, company and business name objections and advertising and regulatory issues in South Africa and across Africa. She advises and represents organisations of all sizes from small South African businesses to large multi-national organisations with substantial portfolios.

The Centre for IP Law and Adams & Adams teams hope to see you there!

Date: Wednesday, 28 April 2021

Time: 11AM (SAST/GMT+2)

Cost: Free (Registration is required)

Platform: Zoom

Please register here. [To submit your questions and request free intellectual property consultation, please fill out the form with the information requested. The speakers will help answer your questions on the day]










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Thursday, 1 April 2021

Afro Leo

Afro-IP is looking for you!


 

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Afro-Dodo

Mauritian Lead Public Private Educational Targets Counterfeits in South East Africa

INTA, together with the Mauritius Revenue Authority (MRA) and IPvocate Africa, organised a first virtual Customs training for 24 south-east African countries that took place from 9 to 11 December 2020 (for English-speaking countries and on 17 and 18 March 2021 (for French-speaking countries). Customs officials from all around East Africa participated in the online seminar hosted on the secure virtual conferencing platform of INTA. The training sessions will be followed by a customs action targeting counterfeit goods in the region in the second quarter of 2021.

The initiative was born out of a virtual Customs training program with MRA during the lockdown in April 2020. MRA was pleased with the result of the online training and initiated this regional event. Online customs trainings are definitely the way forward, although they cannot permanently replace the personal contacts with the customs officials. Going forward, right holders and right holder organisations should push for online trainings in other regions of the world as a supplement to actual physical training events where personal contacts can be fostered.

Marius Schneider and Surishta Chetamun, IPvocateAfrica 
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Tuesday, 30 March 2021

Afro Leo

Scholarly Horizons - a new resource for all things copyright and more

Denise Nicholson, the specialist librarian in copyright and scholarly communication, has launched Scholarly Horizons, a resource and advisory service for publishers, researchers and academics and more! According to the website launched this week, Scholarly Horizons offers various web sessions which are particularly useful for academics, authors, postgraduate students, and librarians, but can also be tailored for corporates, government departments, specific interest groups, freelancers, NGO’s, authors, and/or secondary school teachers and learners.


In addition to this educational content, it has published its maiden informative ebulletin and they provide an array of related services which are described here


This new service addresses a neglected need in the field of copyright and related rights. Knowing Denise from her work at Wits University, the service is likely to be of high quality and affordable. Afro-IP will be tracking her progress with interest and with luck she will send a guest post for our readers when she gets a gap.

You can read more about Denise on this blog, here.


 


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Afro Leo

Mauritius joins ARIPO

Marius Schneider Nora Ho Tu Nam, IPvocate Africa Legal Advisers have informed Afro-Dodo that the Republic of Mauritius is now the twentieth African Regional Intellectual Property Organization (ARIPO) member state. Mauritius deposited its instrument of accession to the Lusaka Agreement which establishes ARIPO on 25 September 2020. Mauritius has however not acceded to the relevant protocols related to patent, trade mark or design. It is not possible to designate Mauritius via an ARIPO application. 

"We have not heard anything locally on the future accession of Mauritius to the relevant protocols related to patent, trade mark or design. It is therefore difficult to predict whether accession to these protocols is on the cards in the near future for Mauritius."

For more on the development of IP in Mauritius on this blog click here.

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Thursday, 18 March 2021

Afro Leo

INTA Webcast Series: Enforcement of IP Rights in Africa


INTA, the global association of brand owners and professionals supporting trademarks and related IP to foster trust, economic growth, and innovation, have teamed up with Marius Schneider and Vanessa Ferguson to broadcast a webcast series dedicated to Africa. It is available live or on demand!


The six-session webcast series, Enforcement of IP Rights in Africa, will highlight developments in Africa. The presenters include government officials, practitioners, and brand-owner representatives from key jurisdictions.


The series starts with an overview session focusing on the current economic climate, factors contributing to counterfeiting, and the robust anti-counterfeiting activities taking place across Africa. The four subsequent episodes focus on these topics in different regions of the continent. In the final session, local and international organizations will report on the initiatives they are taking to fight counterfeiting in Africa.


The series will be presented live during the six weeks and will subsequently be available on demand. Members and non-members can purchase a single session or the entire series.


Marius Schneider and Vanessa Ferguson are no strangers to this blog having launched their book “Enforcement of Intellectual Property Rights in Africa” published by Oxford University Press in May 2020.

 You can register for the events here. Today’s session covers IP Enforcement in West Africa:

"Being the number one economy and the country with the largest population in Africa, Nigeria is the focal point of investors in the West African region. At the same time, Nigeria has increasingly become a target destination and a significant transit route for counterfeit and pirated products. This has a significant impact on the neighbouring countries, including member states of the regional IP organization, OAPI and Ghana—another regional giant.

The event kicks off at 8:00am EDT. See you there! 


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