Monday, 30 July 2012
In this most recent decision, BMW AG v Grandmark International (Pty) Ltd and another (available here), the High Court was asked to make a number of orders, dealing with different areas of law. In the first instance, BMW requested an order declaring that Grandmark was in contempt of an earlier court order. This failed, the court finding that, for contempt, wilful mala fide non-compliance had to be proved.
Secondly, BMW alleged infringement of its registered designs. Most of these registrations could not be relied on, as the registrations were not properly before the court. However, four registrations for a specific vehicle, referred to by its BMW code as the E46, were before the court. These registrations were for ‘aesthetic designs’ (unlike the position in most jurisdictions, the South African Designs Act 195 of 1993 distinguishes between functional and aesthetic designs, but section 14(6) excludes protection for spare parts from the protection granted by functional design registration). The court felt that the registrations, for the configuration of a bonnet, headlight, grill and fender for the E46 BMW model, were of a functional nature, and that the registrations as aesthetic designs were merely to circumvent section 14(6). In addition, the designs failed the novelty test, because they were anticipated by previous designs for BMW automobile body parts. This blogger is no design expert, but, to put it bluntly, the court seemed to find that the designs were merely progressions on existing BMW body part shapes, and were purely functional as they all served a specific purpose – they had to look and fit a certain way to serve their purpose.
The third aspect of this decision that is of interest is the allegation of trade mark infringement. BMW alleged section 34(1)(a) primary infringement. Here, the court could turn to previous BMW litigation for assistance. Our Supreme Court of Appeal has already held that section 34(1)(a) only protects the registered mark as a badge of origin (BMW AG v Verimark (Pty) Ltd 2007 (6) SA 263 (SCA) at 268), and that use of a mark in a descriptive manner does not constitute infringement. What is use ‘in a descriptive manner’? Fortunately BMW came to the rescue again: in Commercial Auto Glass (Pty) Ltd v BMW AG 2007 (6) SA 637 (SCA) para  the court held that, while a phrase like ‘BMW spare part’ by a third party would infringe, a statement such as ‘spare part for BMW vehicle’ would enjoy the protection of section 34(2)(c) - a trade mark is not infringed by ‘the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the intended purpose of such goods, including spare parts and accessories …’. So, thanks to previous litigation by BMW, the court had no hesitation in finding that no trademark infringement took place.
Will another court come to a different conclusion? Possibly in respect of the designs – one man’s object of beauty is another’s car grill. But the trade mark infringement claim looks like a flat tyre, thanks to the previous BMW cases. It does not appear that a claim for unfair competition was included in the prayers. Might this have been successful? In Schultz v Butt the court held that using the actual mould of the complainant, and then selling the competitive product, did constitute unfair competition. On the other hand, Grandmark threatened a counterclaim for referral to the Competition Tribunal, so a successful appeal might not be the end of the saga.
At 81, took the historic title and an incredible fourth World Masters title, with a 3-0 victory against Scotland’s Alex Hamilton.
Peter is well known to the local and international IP community where his contributions to IP and the people who work in it have been immense. This Afro Leo remembers a time 14 years ago when "Mr Fahrenheim" took the effort to arrange a job interview at a London law firm. I had already resigned when he approached me to help set up in a new country.
Read more about his effort here. Pic creds here.
Benin was one of the countries implicated in this Leo’s opinion summary in which he argues that the two regional IP systems in Africa may be creating a nonchalant attitude amongst members in their respective countries. But before we think it is all bad for IP, Benin recently showed its interest by acceding to the Singapore Treaty on the Law of Trademarks (also reported here on Afro IP). Although this may not mean much, it is a step in the right direction – at least from an outsider’s point of view.
Thursday, 26 July 2012
|Afro Leo wonders if you|
can still get spare parts for
this BMW Isetta ...
Writing on the Automotives + IP LinkedIn Group, Lee Curtis (Harrison Goddard Foote, England) asks if anyone has any further information about this case. If you can help him, please do. You can post information below or email him here.
Wednesday, 25 July 2012
Two good friends have sent me the Jack Daniel’s cease and desist letter dubbed the nicest ever! And you can see why here.
If diplomacy is the art of letting someone have your way, then this letter is a trade mark litigator’s Van Gogh. It has ensured that JD’s IP has been respected and at the same time won over a fan and through the viral reaction, very much more. But before we exclaim “Give that girl a ...!”, is this the way in which all cease and desist letters should now be written?
Monday, 23 July 2012
Friday, 20 July 2012
When is asked to think of a famous brand they are likely to answer quickly with names such as Coca-Cola, Nike and Virgin. However, the name Nelson Mandela is not likely to feature at all. The reason for this is not that Nelson Mandela is not “famous” or well-known, but rather because people have not been educated to understand that Nelson Mandela is in fact a brand. This is why it is difficult but not impossible to protect his name as a “brand”. The brand “Nelson Mandela” is of course much more than just his name. It includes every association with him, including his legacy.
So, how does one go about protecting the value of his brand?
The most important thing to remember when building a personal brand that you wish to protect is the necessity to educate the public that is in fact a brand. Your personal brand is an asset and if protected correctly, it can grow to be a valuable one
In short Olivine, a Zimbabwe company, applied to register the word mark DAILY for goods in Class 3, including soaps. D H Brothers, a South African company, opposed and cited its earlier use and reputation in Zambia of the unregistered word DAILY as a trade mark for soaps. The Registrar accepted that D H Brothers had established a reputation and goodwill in the Zambian soap market, connected with its trade mark and found the parties’ marks to be confusingly similar. Nevertheless, she dismissed the opposition and her decision was affirmed on appeal to the High Court.Without giving detailed grounds for its conclusions, the Supreme Court concluded that the decisions of the Registrar and High Court were properly based and dismissed the appeal.
The inability of the proprietor of the earlier mark to oppose is not, however, the end of the story since an action for passing off is still available against the use of the later, registered trade mark.
Source: "ZAMBIA: Well-Known But Unregistered Trademarks Do Not Provide Grounds for Opposition", INTA Bulletin, vol 67, no.13, 15 July 2012
As a history buff, I have always been fascinated with the mystics of the ancient African city of Timbuktu. The city is renowned for its historical significance as the crossroads of civilizations. It is among the few places on the continent that still conjures up nostalgic images of Africa’s intellectual history and achievements. The great African empires of Songhai, Macina, and Mali all had roots in the city. In fact, most of modern West Africa can draw on Timbuktu’s long history of education, religion, and diversity.
In alphabetical order then:
“You are still the same great person you have always been, selfless and bold. Happy Birthday Nelson!” ( ACC - The Anti-Counterfeiting Collaboration, Nigeria.)
"Happy Birthday Nelson from Coulson Harney, Kenya, you are a great inspiration on determination and self belief "
|Appreciative smiles for DMK|
Happy Birthday Nelson!"
Spoor & Fisher wrote in to say: "Dear Tata, thank you for being such an inspiration to us all. Happy Birthday Madiba! From the partners and staff at Spoor & Fisher"
"Congratulations on reaching 94! We thank and admire you Madiba!" - Werksmans IP
Thursday, 19 July 2012
"The journal's editorial board welcomes submissions on Intellectual Property from lawyers and scholars that have hands-on experience with IP issues in Africa. Short statements are also being gathered for a paper that addresses the lack of sufficient health-related Intellectual Property Rights framework in Africa".If you are interested in submitting a brief statement for inclusion in a paper on health-related IPRs in Africa, please email Telena as speedily as you possibly can. Statements or brief suggestions for solutions need not be longer than a few sentences.
Wednesday, 18 July 2012
The power of a licensing agreement, or thousands of licensing agreements managed through a single entity. That’s what brings entertainment to the masses, well brings it legally anyway. And the African masses are getting access to more local entertainment, most likely thanks to a new licensing agreement.
Earlier this week, Youtube Senegal launched, bringing the total number of localized Sub-Saharan African Youtube channels to six. As one of the top stories on telecom news-site Balancing Act emphasizes, these local Youtubes wouldn’t be possible without licensing deals with local content owners via collecting societies.
Before Google goes through the trouble of handling the appropriate licensing agreements, the company gauges whether there is enough interest for a local Youtube. There could be lack of interest in the remaining 40-some countries. However, the relatively small number of localized SubSaharan African Youtube channels is also likely a symptom of difficulties finding the proper rights holders or collecting societies. What to Afro-Leo readers think?
Currently available Sub-Saharan Africa Youtube Channels:
- Youtube.co.za launched May 2010
- Youtube.co.ke launched October 2011
- youtube.co.ug launched December 2011
- youtube.com.ng launched December 2011
- youtube.com.gh launched June 2012
- youtube.sn launched July 2012
(all dates and urls from the Google Africa Blog)
Tuesday, 17 July 2012
Due to the compact nature of the Minilab (all the devices and resources required for drug testing are contained in two transportable units, each the size of a standard suitcase) and its independence from external energy supplies, the tool is well suited for testing in the field. Currently around 470 Minilabs have been provided to 78 countries, more than half of which are located in Africa and a third of which are located in Asia. (Merck)
|where does Minilabs finish?|
Afro Leo appreciates that Merck and other pharma companies spend a lot on anti-counterfeiting initiatives and that the Minilab project is just one of many, but it is still worth noting that the cost of the drug testing facility used to preserve the integrity of the Olympics 2012, a single event, is 25 million euros - over ten times the cost of the Minilab project. (The Telegraph)
Monday, 16 July 2012
Sunday, 15 July 2012
The OHIM Office has a very useful set of guidelines (updated on 1 June 2012) for applying the test and links are supplied along the way. This guide should be accompanied by the trusty South African Law of Trade Marks - Webster & Page.
Examples of where this checklist, with slight variations, has been applied in judgements (June 2012) can be located here (UK) and here (OHIM - check decision under miscellaneous).
As the official home to the Kenyan National Olympic Committee during the games, Kenya House is a window into the wealth of unique opportunities the country has to offer, from visionary investments and trading ideas to its rich cultural heritage and dominance in tourism to Africa. The House will be open to the public for a number of events reflecting trade, tourism and export opportunities in the country. Visitors will also be able to watch live coverage of the Kenyan team competing in their various disciplines on the House’s big screens.
this sounds to Afro Leo like a great initiative and he wishes it well. Are other African nations making use of the London Olympics as a springboard for trade promotion, he wonders?
Wednesday, 11 July 2012
|You don't need to go to extremes|
like this in order to get your
trade mark registered on Sudan
1. If the Registrar of the opinion that the filed application is incomplete, he will request the applicant to complete or correct the application within one month, otherwise the application will be considered abandoned.The Registrar has also issued an internal circular to the staff of the Trade Mark Office, telling them to accept applications only when the notarized Power of Attorney and the legalized Certificate of Incorporation are submitted along with the application.
2. After expiry of opposition term (maximum 8 months), the applicant must complete registration procedure and issuance of registration certificate within 2 months, otherwise the application will be considered abandoned.
3. Application for renewal of a trade mark registration should be filed within six months before expiry of registration term with a grace period of six months after expiry date for late renewal with penalty. The Registrar has allowed a six months from 8 July 2012 for renewal of trade marks that have already expired and not renewed on time, otherwise the registrations will be considered lapsed.
4. The Power of Attorney stamped by the corporate seal of the company and notarized by Notary Public will be acceptable without legalization up to the Sudanese Consulate. However, the Extract from the Commercial Register and the Certificate of Incorporation are still required to be legalized up to the Sudanese Consulate.
So now you know what you have to do!
Source: news bulletin from SMAS INTELLECTUAL PROPERTY, Khartoum, Sudan