Monday, 18 August 2014

This week, first Adword hearing for South Africa and more

It is South Africa's turn to adjudicate on the legality of bidding on competitor marks as Google keywords in a groundbreaking case due to be heard this week. The results of the case will directly affect online advertising and search engine optimisation strategies in South Africa and perhaps be a precedent for Africa.

Cochrane Steel Products Pty Limited have sued M-Systems Pty Limited for bidding on the keyword CLEARVU/CLEAR-VU which they claim is unlawful competition. Unlike most international cases of this type, the mark CLEARVU/CLEAR-VU is not registered. M-Systems are defending on the basis that the evidence provided by Cochrane does not support the right they have claimed in the CLEARVU mark, that  bidding on keywords using marks of others is not per se unlawful and promotes competition especially when the mark does not appear in the ad text generated by the adword.  

The case is due to be heard this week Wednesday (20 August @10am) in the South Gauteng High Court by Judge Nicholls. Owen Salmon (briefed by Rademeyer Attorneys) appears for the Applicant and Gavin Marriott (briefed by Adams & Adams) is appearing on behalf of the Respondent. Afro Leo is involved in the case together with IP attorney, Ian Learmonth for the Respondent.

Meantime, breaking news on another IP case for Google, this time involving the appeal against a finding of patent infringement of Vringo's filtering an ad placement technology, has revealed that Google has successfully overturned the $30.5 million patent infringement verdict resulting in a 72% drop in Vringo's share value.

Afro Leo has just been informed that there are still spaces available for the Breakfast Seminar this week Thursday 21 August on IP Audits - what are they, why are they important and what do they cost? Register here for complimentary access.

8 comments:

Caroline Ncube said...

Thanks Darren, this is a timely update. I have a class this afternoon at 5 on online marketing and advertising and will be discussing Google Adwords litigation! I'll be watching this matter as it progresses.

Jeremy Speres said...

Many thanks Darren - exciting news! Any chance you could upload the papers?

Darren Olivier said...

Caroline, nice to hear! Jeremy, I am hoping to but will probably need consent.

Darren Olivier said...
This comment has been removed by the author.
Jeremy Speres said...

Thanks Darren. Good luck for Wednesday!

Jeremy Speres said...

Dying to hear how it went Darren!

Darren Olivier said...

Update: The respondent’s (M-Systems) argument was that unless passing off could be shown (which M-Systems contends was not established) an unlawful competition argument must fail and also, that there is significant international precedent that such a practice was, in any event, lawful especially where the trade mark (in this case CLEAR VU) was not used in the ad text. The applicant (Cochrane Steel) submitted that unlawful competition should be extended to cover new forms of liability – essentially dilution based unfair advantage but inherently couched on the notion that such a practice (keyword bidding using competitor trade marks) was unfair. Both counsel made extensive reference to judgements in Europe and New Zealand where the issue has been debated, and also our own common law. The applicant made a request for an interim order pending the registration of their trade mark (which is being opposed by the respondent) and attempted to introduce evidence that the respondent was using their trade mark in ad text which was denied by the respondent who asked for the evidence to be struck. After hearing counsel for several hours, the Judge reserved judgement and this is expected within the next few weeks.

Darren Olivier said...

Just heard, decision due out tomorrow. Will keep you posted