Tuesday, 30 March 2010

Chameleon controversy

Against the backdrop of gorgeous wine estates Lovane and Jordan comes a fight over marks which are conceptually, chameleon (no pun intended). Key principles include the extent of protection for English words against Xhosa translated derivatives, evidence preparation and the link between passing off and infringement. Jeremy Speres who completed his LLM last year and recently joined Stellenbosh based firm Cluver Markotter found time to send Afro Leo this latest trade mark decision from the Western Cape and a very useful summary. You can decant the decision and the useful summary here and here: Judge Bozalek rules on Xhose translation of trade mark

Additional comment:
  • The judge erred in suggesting that evidence is required to show actual confusion (see para 21) - a likelihood of confusion is sufficient.
  • Did the judge also err that expert evidence is required to show a linguistic link between "lovane" and "ulovane" (also para 21) which seems at odds with para 6 which states that it is "common cause" the word "lovane" was derived from the xhosa word "ulovane" (perhaps he meant that the derivation was common cause but the impact on a consumer would not be - see also para 22)?
  • Does the judge endorse the notion that because Xhosa-speaking people make up a minority of population (17.5%) it is more difficult to show a likelihood of confusion (see para 22)? If he did he must surely be incorrect.
  • Counsel did not argue the "bait and switch" concept which is mooted (see Momberg & Els here) to be part of our law and goes something like this: Once Lovane baited the public with an image of a chameleon on its signage (which would further the conceptual similarity with the name "Lovane" and also the derivation of "Lovane" from "Ulovane") the mere removal of the chameleon image does not avoid further misrepresentation/passing off occurring. In fact, as the argument goes, Lovane would in those circumstances be required to go further than would ordinarily be the case to ensure that no confusion would occur ie it would be argued that they would be required to change their name too.
  • The whole case would have been decided differently had Jordan filed for the protection of its name in Xhosa
  • Does the protection afforded by word marks extend to all identical conceptual devices? Afro Leo expects not. Take for example a registration for CAT for shoes - it is unlikely stop a puma (PUMA) or panther (Slazenger) device being registered or used for say, shoes and vice versa.

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