African intellectual property law, practice and policies. This weblog provides news, information and comment on IP law, practice and business deals right across Africa. Ce blog propose des actualités, informations, et commentaires sur la législation et la pratique en matière de propriété intellectuelle et de droit des contrats d'affaires en Afrique. For some insight into the origins of this blog click here.
Friday, 7 October 2016
Similarity Tools, Bug Bears and Brexit
Readers may or may not be aware
of the work that the European IP Offices have doing to establish a similarity tool for
goods and services. This tool (see here)
consolidates the practices of the offices to create a search that will
establish the degree of similarity between goods & services. This is
important for both prosecution (searches, citations etc) and litigation
departments (oppositions, infringements, cancellations etc). It is a very useful guide only they say - check out its disclaimers.
Similarity Tool Disclaimer
Some of you may have already used this
tool, some not. Although it does not give you a practice on the similarity of
wine & grapes, it does for just about every other good and service. This is
useful because if there is no similarity there cannot be a likelihood of
confusion under the European application of the test and probably since Due South in South Africa's application of the test too. There is also a handy section measuring the
degree of similarity and the reasons for non similarity (mostly applying the
well known Treat test and recent permutations of it).
Forgive me for the next paragraph
but it has been a bug bear of mine since returning to RSA from Europe almost a decade ago:
Under the EU application of the
Sabel v Puma test on "likelihood of confusion", there is a distinct requirement for the similarity of goods
and services to be determined. In South Africa, the judgments still conflate
the issues of similarity of goods/services, similarity of mark, nature of
consumer, purchasing act, strength of mark and likelihood of confusion without
first analysing each element. I believe that the current approach in RSA is the wrong approach. I
jotted down my thoughts in several blog posts in 2012 (here,
here) and more recently gave a presentation at UJ on this very topic. I still
get very irritated when I read Yuppie Chef, Black Knight and the many others on
the application of our test because it leads to incorrect decisions. At least
in my opinion.
Incidentally, this week ARIPO renewed its co-operation with EUIPO, and one of the areas of collaboration involved the
sharing of the similarity tool. I thought that the tool, very kindly made available
on EUIPO’s website, was therefore already “free to air”. However, the sharing
of this tool and the various areas of co-operation discussed by the two intergovernmental
offices does indicate to me that European influence in the interpretation of
the tests is likely to prevail in Africa as we go forward.
On this note, it will be interesting when/if Brexit occurs. Up until the mid nineties, RSA courts if unsure of the meaning of their trade mark legislation they would take a look at that was happening in the UK. As the European system has developed the gaze of the South African courts has focussed more on continental Europe and decisions of the Courts of Justice as they have been known. Now if Brexit occurs it will be interesting to see which courts will have our preference; we have seen much discontent over the years over on IPKat about how the Brits view some of the decisions in Europe.