Monday, 9 February 2009

Delays at the SA Registry favour Trade Mark proprietor

In Golden Fried Chicken (Pty) Ltd (“Applicant”) v Soulsa CC (“Respondent”) the High Court of South Africa has interdicted/injuncted Soulsa from infringing Golden Fried Chicken’s registered trademark SOUL. The case is a reminder of the strength of a registered trade mark right in South Africa. However, the decision also highlights whether it is appropriate for a trade mark proprietor to be able to enjoy a period of exclusivity to their unused trade mark for almost a decade (due mainly to delays at the SA Registry), without that trade mark becoming vulnerable to a cancellation claim based on non use. In this case the mark SOUL was applied for in 2001, is not in use on restuarants, and will only become vulnerable to cancellation or part cancellation on the basis of non use in 2011.

For summary of the case prepared by Msawenkosi Gaxo(Bowman Gilfillan) click here.

Judge Southwood , who adjudicated in this case, has had considerable experience in trade mark matters and is one of the more respected voices on the bench. He dealt with matter in a short judgment but Afro Leo would have liked to have digested his reasons for dismissing arguments (if raised) that SOULSA appears to stand together as one word (phonetically similar to SALSA) where the identity of the registered word SOUL (an ordinary recognisable word) is changed by the addition of "SA" such that the two words SOUL and SOULSA (as used) are in fact distinguishable. It is also noteworthy that although the SOUL registration was not reclassified according to the latest revised edition of the Nice Classification (where restaurant services now fall in class 43 and not in class 42), such omission was apparently not relied upon by the defence, and correctly so it would seem.

Once again, Afro-Ip wishes to thank Msawenkosi for drawing their attention to this case and for providing the handy summary for readers.

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