Monday 14 April 2008

Darren Olivier

Two stripes and you're....


That may be the effect of the decision by the European Court of Justice (ECJ) this month in the long running effort by Adidas to enforce its three stripe device mark against the two stripe "decoration" by Marca Mode CV and others reported here. The ECJ was asked to adjudicate on the meaning of the Harmonisation Directive, in particular whether the requirement of "availability" (ie the need of others to use the sign in the ordinary course of their business) should be taken into account in the assessment of the scope of the exclusive rights of the proprietor of a trade mark. The ECJ said NO, except in so far as the limitation of the effects of the trade mark defined in Article 6(1)(b) of the Directive applies.

Article 6(1)(b) of the Directive provides that the proprietor of a trade mark cannot prohibit a third party from using, in the course of trade, indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services, provided he uses them in accordance with honest practices in industrial or commercial matters.

This case finds itself on Afro-IP because Anglophone African countries frequently use ECJ cases on the interpretation of the Harmonisation Directive, to help determine their own law. For example, under SA law, could this judgement spell the end of the relevance of the phrase "reasonably required for use in trade" to justify the rejection of a trade mark, thereby subtly broadening the right afforded by a trade mark registration (as the ECJ have done)? Article 6(1)(b) is repeated almost word for word in the SA Trade Marks Act, 1993 as Sections 10(2)(b) (Unregistrable Trade Marks) and 34(2)(b) (Defences/Exclusions to infringement).

Darren Olivier

Darren Olivier

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