Friday, 7 May 2010

Booze and pills!

Finally two South African trade mark matters that have been heard in court, rather than before the ASA! Details on both are scarce, but possibly readers of Afro-IP can provide more information.
The first appears to be a passing-off matter. Simply Slim was a very successful slimming product, recently banned by the Medicines Control Council because it contained a banned substance. The producers/importers (?) alleged that the goodwill and reputation of the product was infringed by the redirection of consumers, who searched for the Simply Slim product on Google, to a website advertising another slimming product, Super Slim. The applicants alleged that they were ready to relaunch the Simply Slim product, and had enormous goodwill, based on figures of 320 000 purchasers and a turnover of thirty to forty million rands per month. (This despite the fact that the MCC, in a letter submitted to court, stated that Simply Slim was not permitted to relaunch its product.) The respondents countered by stating that the applicants had no goodwill because of bad press cover and the recall of its product, and appear to have raised a defence of ‘unclean hands’. Judge Legodi, in the North Gauteng High Court, held that the applicants could not rely on their reputation, as the product was currently banned, and was apparently appalled that the applicants announced their intention to relauch under the existing circumstances. If anyone has more details, please let us know – it would be very interesting to have another decision on the ‘unclean hands’ defence in South African law.
The second matter is one of trade-mark infringement. Does use of the word ‘marula’ on a liqueur label to describe the flavour of the contents, infringe the registered trade mark “Amarula’ used on a marula-based liqueur? The applicant alleges infringement, while the respondent appears to rely on s34(2)(b) – bona fide description. The respondent is also counterclaiming for the entry of a disclaimer of the word ‘marula’ against the applicant’s trade mark. Judge Goliath, in the Western Cape High Court, has reserved judgment, but once again, whatever the outcome, this litigation illustrates the dangers of descriptive marks.

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