Friday, 25 September 2009

Is Caterham retrospective? RSA decision

Brand enforcement lawyer Candice Spargo alerted Afro-IP to the recent case of Mayo Foundation for Medical Education and Research v Theatre Mayo Clinic Company (Pty) Ltd and Others (1428/2006 ) [2009] ZAGPPHC 110 (14 September 2009) in which the Applicant relied predominantly on passing off, in requesting a change of name.

"The matter was complicated in that the Respondent's use of the MAYO trade mark began in 1974! One of the key issues argued in the matter was that the change in the common law as held in the Caterham case (ed - this case allowed a claim for passing without requiring a physical presence in RSA which had been a major problem for foreign rights holders until then) applied retrospectively. The Applicant argued that despite it not having a physical presence in South Africa at the time of the alleged passing off, the change in law in the Caterham case applied retrospectively, and the Applicant could prove a reputation in SA on that basis. However, Southwood held that the common law principles, as held in Caterham, do not apply retrospectively and the application was dismissed (pages 21 - 24)."

Afro Leo says this must be correct - imagine the floodgates that would open if it did apply retrospectively. It would have been great news for lawyers but difficult to explain to businesses that had chosen names/get-up that were considered lawful at the time.

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