Wednesday 21 October 2009

Darren Olivier

Thursday thinking as DM Kisch celebrates 135 years

Access Codes Please

Greater awareness of the existence of open access information resources for innovation and making the information easily accessible and relevant to developing country users could help spur innovation in these countries, according to top technical assistance providers and local innovators. In a two-part series, Intellectual Property Watch (Robinson Esalimba and William New) spoke with local innovators and researchers in Kenya to identify successes and challenges facing local innovators in Africa. Mrs Nicholson (ACA2K network - music to your ears, I suspect.)

Bad faith and bona fide intentions

The recent US decision in Honda Motor Co. v. Winkelmann, 90 U.S.P.Q.2d (BNA) 1660 (TTAB 2009) illustrates how a "lack of intention to use" can be fatal to an application. The US has always been more strict on this requirement but it nonetheless demonstrates the potential vulnerability of marks filed in countries whose registries accept wide specifications and there is a corresponding requirement on the applicant to show that he has an intention to use the mark for the goods or services covered by the application.

Take for instance the filing form in South Africa which requires the signatory to state that:

"The Applicant claims to be the proprietor of the accompanying Trade Mark which is proposed to be or is being used in respect of the aforementioned specification of goods/services".

RSA case law mentions that one must have a present and definite intention to use the mark.

"There must be a real intention to use the mark in future [for the specification of services], not a mere problematical intention, nor a general intention to extend business or an uncertain or indeterminate possibility" (Webster and Page, amongst others).

Section 32(3) of the UK Act, similarly states:

“The application shall state that the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used.”

Left - bona fide or a bone for fido(s)...?

Afro Leo thinks it is just a matter of time before there are increased challenges on wide specifications on this basis... as was held by this UK Registry Hearing Officer:

"In so far as the applicant makes a materially false statement in this regard then I believe that the application is made in bad faith. This was clearly the view of Jacob J. in DE LA MER, and he evidently had well in mind the difference in approach of OHIM as revealed by TRILLIUM...By making its statement of use/intention of use, when it did not have an intention to use LML was acting in a manner that fell short of the standard of acceptable commercial behaviour observed by reasonable and experienced men." Landau in Jemella Limited v Landlord Mortgages Limited (2008 UK Registry decision)

It also shows that care should be taken when drafting specifications for US applications, in particular.

On a celebratory note...

it came to Afro Leo's attention just yesterday that Messrs DM Kisch are celebrating their 135th anniversary with a cocktail party this evening and this Leo is invited. Congratulations DM Kisch on 135 years!

Did you know that in RSA in 1874:

- A college was founded at Stellenbosch which later becomes the University of Stellenbosch
- The railway line from Port Elizabeth to Uitenhage was opened
- The Burgerspond, the South African Republic's first coin, was introduced
- Charlotte Makgomo Maxeke, religious leader and political activist, was born at Ramokgopa near Polokwane.

Darren Olivier

Darren Olivier

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