As hinted at in Friday’s post, Louis Harms published a note entitled “The Aftermath of Oilwell (PTY) LTD v Protect International Ltd” last month in the Tydskrif Vir Hedendaagse Romeins-Hollandse Reg. If the THRHR pronunciation is somewhat of a mouthful, the note is much more straightforward. It makes a case that the change to the Excon Regulations following his own judgment in Oilwell (see here) is “arguably overbroad, discriminatory and irrational” and which “will result in an unnecessary burden on the commercialisation of IP and could lead to unnecessary litigation”.
It would be easy to cast off the note as sour grapes if the arguments raised in them were not compelling examples of the everyday difficulties that local and overseas businesses are faced with in interpreting the amendments to the regulations. If a foreigner (including a foreign subsidiary of a local company) and a local is involved, a simple trade mark assignment or intra group licence is suddenly not so simple. Even a co-existence agreement (effectively a form of non-assert agreement) in an everyday trade mark opposition lives in fear of the regulator because of the ambiguity of the excon change.
As Harms points out, a failure to obtain exchange approval, will not render the “transaction” void. However, this is small comfort to any business (doing business with or out of RSA) who is simply trying to be legal and co-operative. Delay, cost and uncertainty are the inevitable result and the conclusion is no better put, than by Harms himself (with the help of Alexis Apostolidis), in his note.
You can read it in full here - 2013 (August) THRHR 421.