10 Reasons to follow European approach

Using RSA as an example, this post makes a case for a more simplified approach to the trade mark infringement test. It recommends that the formulaic approach to the “global appreciation test” adopted in Europe, as a handy checklist for African adjudicators.

Here are ten reasons to support the proposition (all relating to RSA – Africa’s most active country for trade mark enforcement - but probably applicable across for most of Africa):

1. Since 2009, two out of every three cases with a trade mark infringement aspect have been overturned on appeal (Adcock, Puma (infringement test wrongly applied - even though appeal dismissed), KG, Century City) indicating that lower courts are getting it wrong more often than they are getting it right.
2. A number of other cases not taken on appeal have been criticised on this blog for incorrectly having applied trade mark laws (eg Amarula, Zonquasdrift, Soulsa, Adidas) also indicating that the lower court's understanding is probably not as it should be.
3. There are numerous opposition cases at the Trade Mark registry waiting adjudication. At the current rate the backlog will take four years to clear. As opposition and infringement tests are similar, a simpler approach could speed up the process. In addition, greater alignment with Europe could provide access to a larger pool of skilled adjudicators to assist if necessary.
4. Although trade mark litigation is alive and well there is no centralised IP court or specialist IP judges in the country meaning that many judges are called upon to decide trade mark cases for the first time, as single judges in the High Court.
5. IP courses at Universities continue to be elective so most graduates have never been exposed to the intricacies of trade mark law. The graduates become advocates (from whose ranks Judges are generally selected) and attorneys running trade mark cases.
6. There are only a handful of specialist IP advocates and firms in the country dealing (though not exclusively) with an area of law that is one of the most litigated areas in the country, and growing worldwide (the number of trade mark filings across major registries continues to increase year on year).
7. RSA law was amended in 1993 to bring it more in line with the European Harmonization Directive. The wording of the Directive and RSA trade mark legislation is very similar.
8. The European approach is designed to interpret a trade mark infringement test that applies across 27 Member States and many more languages and cultures. The Rainbow Nation has a similar breadth of diversity with eleven national languages and many more cultures. In other words European compromise in the interpretation of the test would be helpful to us in Africa.
9. Over the past 16 years the highest court in Europe has been called upon to decide the interpretation of the Harmonization Directive and the infringement test at a very rapid and regular rate. Since 2009 there have been over 100 trade mark cases dealt with by the highest European court compared to a relatively low, 6 in RSA.



Why a quagga when you have a zebra?

10. The Supreme Court of Appeal in Cowbell (see, eg para 10) confirms the adoption of the European “global appreciation” approach in Sabel V Puma, in principle, as the basis for applying the local infringement test, so there is clearance from the SCA to use the European approach.

The upshot of all of this is that a formulaic approach has been developed in Europe and is well applied, most notably by the Community Trade Mark Office. The frequent European interpretation of the test would be more useful if we more closely aligned. Afro-IP therefore intends to unpack the European test as a check list, in an upcoming post.