Tuesday, 16 August 2016

CLEARVU Opposition Decision

The latest in the trade mark battles between security fence competitors, Cochrane Steel and M-Systems, are the findings in the opposition brought by M-Systems against the Registry's acceptance of Cochrane Steel's CLEARVU trade mark without any disclaimers or endorsements in respect of CLEAR, VU and/or CLEAR VIEW. M-Systems also claimed that the mark should not have been accepted because it described the intended purpose of a fence, namely one that provides a clear view, and that the evidence on file did not support a finding that the mark had acquired a secondary meaning.
Readers will recall that market leader Cochrane Steel has consistently attacked its competitor M-Systems' online advertising campaign which had bid on its CLEARVU trade mark as a keyword. The matter was brought before the High Court, the Advertising Standards Authority and the Supreme Court of Appeal. Cochrane Steel was unable to persuade any of the tribunals that there was anything wrong with M-Systems' campaign and in the end created Africa's first SCA case on keyword bidding. These decisions are reported on here, here and here.
The opposition decision, handed down on Thursday last week, ruled in favour of M-Systems insofar that:
  • there is some validity in the submission that the word CLEARVU is "descriptive of the characteristics of steel fencing" (para 38);
  • the mark should have been accepted endorsed with disclaimers and endorsements (para 52).
However, the judge also held in favour of Cochrane Steel that their mark CLEARVU was distinctive of other goods in the specification which meant that it could be accepted for fences notwithstanding that the word the descriptive nature of the word (para 38). Accepting that she may be incorrect in this conclusion (para 40), the judge held that the mark had, in any event, acquired a secondary meaning through use (para 50) allowing it to be registered.
On the issue of costs, despite upholding the Opponent's opposition in respect of the endorsements, the judge ordered that costs be borne by them. Both parties have until the end of the month to appeal the decision.
The conditions to be endorsed against the registration of the mark are that:
"The registration of this mark shall give no right to the exclusive use of the word “clear” and “view “separately and apart from the mark; and
The trademark registrant admits that the registration of this mark shall not debar others from the bona fide descriptive use in the course of trade of the words “clear view” and “view”."

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