Friday, 6 March 2009

Purcellin mark put to the test in RSA

Adams and Adams reports on a recent decision, Union-Swiss v Medpro Pharmaceutica (Pty) Ltd, where the High Court of the Western Cape found that the applicant’s mark, Purcellin, had been infringed. Purcellin is a synthetic version of the oil found in the preen glands of waterfowls, and is the ‘magic’ ingredient in Bio-Oil, a very popular skin care product. (This Post by Roshana Kelbrick)

The applicant was the registered proprietor of the mark Purcellin and the respondent acknowledged that it used the mark without authority on a similar product. The respondent alleged that the applicant had no bona fide claim to proprietorship, as the original proprietor had abandoned the mark, after which the applicant registered the mark in South Africa. As proof, the respondent submitted a number of internet searches that showed patent specifications referring to Purcellin Oil, and alleged that this was now in common use as a descriptive term for synthetic preen gland oil.

The court found that the mark was distinctive in South Africa, as the respondent had failed to show that other manufacturers sold products in South Africa that used the term Purcellin to describe the relevant ingredient, and that the existence of patent specifications did not prove that the term Purcellin was used in a generic sense in South Africa. Also, the applicant could claim to be proprietor, as it appropriated the mark with the consent of the original proprietor.

What is of interest here is the fact that the applicant also filed a complaint with the ASA (Advertising Standards Authority). Much has been written recently about the advantages of raising trade mark issues in this forum, rather than embarking on litigation, and this ASA ruling illustrates some of these advantages. The ruling appeared at least a year before the judgment (December 2007), and, while the ASA did not find that the advertising goodwill of the applicant had been breached by package copying, it did find that the claims made on the respondent’s packaging conveyed the message that the product was a medicine, rather than a cosmetic, and that the claim had to be withdrawn (and so the packaging changed). Also, in proceedings before the ASA, outside counsel may not appear for the parties, in contrast to High Court proceedings.

But one problem experienced before the ASA was the fact that infringement litigation had also been instituted – the ASA ruled that, because action had been instituted on substantially the same subject matter (the trade mark infringement), clause 2 of the ASA Procedural Guide prohibited the ASA from considering this aspect of the complaint. This did not disadvantage the applicant, as the respondent had to change its packaging, but it is possible that an earlier (and less expensive) ruling on trade mark infringement could have been obtained.

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