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 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.
Happy Friday!