Friday, 28 June 2013

Unshackling RSA’s TM Registry – some other solutions

Following the previous post about the difficulties experienced by RSA’s TM Registry, which you can read here, Afro-Leo, with the help Katherine Harding, have established that an application was made by the Registry under Section 6 of the Trade Marks Act for additional hearing officers to be appointed, sadly to no avail. So, in an effort to address the ever-increasing backlog new oppositions are now being transferred to the High Court for determination in terms of Section 59(2) of the Act.

Whilst the effort is greatly appreciated by most, it has raised some issues, especially on costs:

1.    There are no specialist IP Judges and the rate at which trade mark judgments are overturned on appeal remains high. Consequently, we could see an increase in appeals and therefore cost.

2.    The additional procedural steps required by the Practice Manual of the North Gauteng High Court (such as the filing of a practice note in the case of opposed matters) may also increase costs and the employment of counsel is now almost obligatory.

Consequently, parties are looking for other solutions such as arbitration, mediation, a mixture of both or the preliminary view.

Arbitration in South Africa is regulated by the Arbitration Act (find it here). Arbitration is entered into by agreement and the parties are empowered to choose their own arbitrator. There are many people to consider as potential arbitrators, such as former Supreme Court Judge Louis Harms, or recently retired Chris Job and Alan Smith, and there may be others  (who are all more than qualified and may even be interested).

There are a number of considerations which make arbitration and mediation an attractive option. Firstly, it is completely up to the parties to agree the terms. The fees of the arbitrator/mediator can be fixed by agreement between him/her and the parties. This means that costs can managed and also the quality of the award (if arbitration) is going to be high but even if you are unsatisfied, that award may be taken on appeal if provision has been made for such an appeal in the arbitration agreement. For mediation, the results could be similar and one can use a mixture of both.

For example, you could agree that the person reads the papers, asks questions and makes an award as an arbitrator but keeps it secret. He then switches to mediator, the parties agree a time limit and if they cannot settle wit the help of the mediator, the award is disclosed. Alternatively, the person simply reads the papers and gives a preliminary view and the parties then attempt to settle while they wait for the matter to be heard by the Registry or in Court.

There are of course, the usual difficulties with ADR because the Registry is not bound by any award and we lose out on the value of any precedent. However, in most cases difficulties can be overcome with the help of the parties themselves eg formally withdrawing or amending an opposed application following an award and a pragmatic approach by the Registry.

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