Thanks to Jeremy Speres (Floor Swart) for this guest post:
When
I began reading this judgement I was
desperately looking for a distraction from my disappointment at Liverpool’s exit
from the FA Cup at the hands of referee Howard Webb, assisted by Arsenal. I had heard that the judgement involved
FirstRand Bank seeking revocation of a registration for a device mark
incorporating FIRST CENTRAL INSURANCE.
FirstRand of course is the owner of various registrations incorporating
FIRST. I was therefore hoping for a
juicy read covering issues like laudatory marks and perhaps some clarity on the
“series principle” and whether Judge Harms’ comments in the Upjohn and Cowbell cases
regarding that principle were obiter (as argued in the McDonalds case). Alas, it was not to be, but the judgement was
interesting for two other reasons.
Form of TM application
 |
| looks clear to me! |
Firstly,
FirstRand had sought revocation on the basis of a provision that is not
commonly encountered – Regulation 13(4) (a year’s free subscription to Afro-IP
for the first one to recall the provision in the comments! - hint, click here). Essentially, the regulation requires
representations of marks to be clear and distinct. Firstrand argued that parts of the mark in
question were obscured and unidentifiable and presented a photocopy of the
Register in evidence. The court rejected
this argument for the following reasons: a) The court could not compare the
photocopy with the actual register; b) the regulation permits the Registrar to
call for additional representations if not satisfied, which did not occur,
indicating that the Registrar was satisfied; and c) the court applied the
section 51 presumption that registration is prima
facie evidence of validity. It seems
that the burden of rectifying the register on the basis of a contravention of
Regulation 13(4), and perhaps, by extrapolation, other “manner and form” type regulations,
is a heavy one!
Intent to use
Secondly,
FirstRand sought revocation on the basis of section 27(1)(a), which provides
for revocation where the mark was registered without any bona fide intention that it would be used and no use has in fact
been made of the mark. The owner of the
mark could only adduce evidence of a handful of insurance claims and some
correspondence as proof of use. Interestingly,
the court found it telling that a practising attorney deposed to the
respondent’s affidavit and would have appreciated the need to provide
substantial evidence of use and yet was unable to do so. Ultimately, the court found that the
respondent had “no serious intention of carrying on a trade as a commercial
enterprise” and granted the application for revocation. The court cited the judgement in the recent
New Balance decision where it
was stated that “clear and compelling” evidence of use is required and
allegations that are “sparse, ambiguous or lacking in conviction” will not be
accepted. This case again highlights
that, although use on a substantial scale is not required, courts are prepared
to interpret the requirement of bona fide
use strictly, against use that may on the surface seem legitimate but that
ultimately does not exhibit a serious intention to trade commercially. [Ed also bringing RSA more in line with European decisions on this issue.]
Moneyweb v Media24
In
a totally unrelated matter, those who have been following the fascinating
Moneyweb v Media 24 dispute involving aggregation and copyright should take the
time to read Roger Hislop’s well-reasoned if not somewhat polarising piece on
MarkLives.com, but not before they’ve read the answering
papers
filed by Media 24 in December. In fact,
Roger’s piece is so assured that I for one wouldn’t be surprised to find some
of his arguments in the replying papers!
To whet your appetite and perhaps give you an idea of what’s at stake,
here’s what Roger believes will happen if the court and the media don’t act to
prevent the kind of churnalism Media 24 is
accused of:
“And then
our society will no longer have a Fourth Estate with the will and the skills to
crack open the Defencex scandal, penetrate the e-toll spin, or hack through the
Zuma spy tape evasions. We will just have 5 Mind Blowing Things You Never Knew
About Belly Fat.”
