Wednesday, 14 December 2016

Afro Leo

Guest Post: 'The Look' For Everyone by Gaby Meintjies

The Supreme Court of Appeal recently upheld an appeal by Pepkor Retail (Proprietary) Limited, which trades, inter alia, as Ackermans, ("Ackermans") against an order interdicting and restraining it from using the phrase THE LOOK FOR LESS sought by Truworths Limited ("Truworths")– the trade mark proprietor in South Africa of the trade mark THE LOOK in class 25 for clothing, which is used in the fashion retail industry. In response, Ackermans filed a counter-application for the removal of Truworths' mark from the Trade Marks Register based on non-distinctiveness, which was also upheld by the SCA.

The parties are rivals in the fashion retail industry and when Truworths found out about Ackermans' use of the phrase THE LOOK FOR LESS it was not happy, especially in light of the fact that the words "the look" were being used more prominently than the words "for less". Initially the parties managed to reach a settlement specifying that Ackermans would not use the mark THE LOOK on its own or use the phrase THE LOOK FOR LESS as the name of a store or on a label or swing tag in respect of any clothing.

Examples of the current use of the respective marks THE LOOK by Truworths and Ackermans :

It didn't take long before the parties were at loggerheads once again after Truworths heard that Ackermans was using the phrase THE LOOK FOR LESS on its in-store, print and television advertisements and signage. Truworths claimed this constituted a breach of Ackermans' undertaking in terms of the settlement, infringement of its trade mark THE LOOK as well as the passing off of its goods being those of Truworths. In defence, Ackermans argued that Truworths' trade mark THE LOOK was not distinctive or capable of distinguishing its goods, rendering its registration invalid.

The Western Cape High Court found for Truworths on all grounds it relied on and dismissed Ackermans' counter-application.

On appeal, Truworths no longer relied on the grounds of breach of the undertaking and passing off and only the infringement of the trade mark. Specifically, it relied on sections 34(1)(a) or 34(1)(c) of the Trade Marks Act, which provides for the infringement of a mark where there has been use of a same or similar mark, in respect of identical goods or services in the first instance or similar goods or services in the latter instance, provided there is likely to be deception or confusion in the marketplace.

The SCA went into what the purpose of a trade mark is and how it is meant to serve as a 'badge of origin' and be able to distinguish the goods or services of one person from the goods or services of another. Thereafter the Court discussed what constitutes an unregistrable mark in terms of section 10, stating that if it only consists of words that describe the particular goods or services covered by the registration it will not be inherently capable of distinguishing the goods or services of that person. As there was no proof that Truworths had used the trade mark THE LOOK prior to registration, Truworths could only rely on the mark being inherently capable of distinguishing.

The Court accepted Ackermans' evidence relating to the common meaning of the words "the look" and rejected Truworths' argument that the words are a "'covert or skilful allusion’ to these goods". Truworths even admitted that the phrase "the look" is commonly used in the fashion industry to indicate that a piece of clothing or accessory is fashionable. It also did not dispute the evidence put forward by Ackermans illustrating numerous examples of other fashion industry retailers, for example Woolworths and Foschini, using phrases such as "get the look". The Court held, in light of this evidence, that clearly the words have a generic descriptive meaning in the context of the fashion industry and, accordingly, a monopoly over their use cannot be afforded to one particular retailer.

On the question of whether the trade mark THE LOOK had become capable of distinguishing Truworths' goods through use at the date of Ackermans' counter-application, the Court stated that Truworths had failed to produce any evidence of the public perception of the mark and only evidence merely illustrating use of the mark. Thus confirming the principle previously followed by the courts that 'use does not equal distinctiveness'.

In summary, the Court accepted Ackermans' counter-application and ordered that Truworths' trade mark THE LOOK be removed from the Trade Marks Register, which resulted in the success of the appeal against the order in the main application.

The conclusion to this case may have been different had Truworths been able to produce convincing evidence that the public perception was such that the trade mark THE LOOK was a so-called 'badge of origin' for its clothes. Such evidence would have needed to have been independent and illustrating more than just use of the mark. However, in light of the lack thereof, Truworths will no longer be able to rely on it having "the look" exclusively.

*GabyMeintjes is a senior associate in the Intellectual Property law department at Fairbridges Attorneys in Cape Town, South Africa.
Read More

Tuesday, 13 December 2016

Afro Leo

Looming Traditional Knowledge Bill

The bones have been thrown for the estimated 25 000 traditional healers in South Africa and the impending regulations could have significant implications for ancient cultural practices, as well as the healers themselves, who may be in the dark regarding the expectations on them.

The Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill was brought before parliament in April 2016. The proposed regulations for traditional healing practitioners in South Africa is not without a number of contentious issues, including to what extent traditional medicine practitioners should be regulated and precisely what “indigenous knowledge” entails.

Luyanda Frans, parliamentary liaison officer, said the bill was currently being processed by the National assembly and is likely to be finalized in March next year.

Andre Van der Merwe
Andre van der Merwe, of Kisch IP law firm, writing for, questions the consultation process undertaken.

“The parties consulted to date are merely other State departments. No indigenous communities or their leaders have been consulted to date and in addition no regulatory impact assessment has been carried out to determine whether the benefits of the act will outweigh the costs of implementing it.”

Frans said the government was conducting public hearings but couldn’t confirm whether they had consulted with the various traditional healer organisations.

Conrad Tsiane, a traditional healer and chairman of the interim board working with the National assembly, said the local healers would be consulted and invited to participate. He said road shows in all the provinces, in conjunction with the department of health, would take place once a registrar had been appointed.

The World Health Organisation (WHO) estimates that around 80% of the population in Africa makes use of traditional medicine.

Van Der Merwe says generally, TK can be divided into three broad classes, namely: indigenous scientific or technical knowledge, works of an indigenous-cultural nature and miscellaneous works or know-how that are difficult to classify.

The defensive protection sought through the act is essentially to ensure that third parties do not gain illegitimate or unfounded IP rights as a result of TK.

Traditional (or indigenous) knowledge encompasses know-how resulting from a traditional context, including practices, skills and innovations, according to the World Intellectual Property Organisation (WIPO). It can also cover traditional cultural expressions, such as signs and symbols.

The WHO centre for Health development says African traditional medicine “is the sum total of all knowledge and practices, whether explicable or not, used in diagnosis, prevention and elimination of physical, mental or societal imbalance, and relying exclusively on practical experience and observation handed down from generation to generation, whether verbally or in writing.”

Dr Tsiane
A major bug-bear seems to be the definition of the forms of TK and how any act can successfully create protection for the various forms. But more pressing for Traditional medicine practitioners is the registration of knowledge. The transitional arrangements in the bill call for the recording of any TK knowledge that exists prior to the enactment to be registered within 12 months.

Van der Merwe says this is likely to place a huge burden on the indigenous communities to register TK within the time frame- the very communities the bill purports to “protect”.

Tsiane said it was very difficult to register TK and the idea was not to collect recipes of indigenous knowledge passed down over the years. But he admits it’s going to be tough getting all the practitioners to conform to the new regulations.

The proposed bill also provides for the establishment of a National Indigenous Knowledge Systems Office (NIKSO) and an advisory panel to support the office. Their function will include developing an effective regulatory framework and act as custodian for TK that cannot be specifically designated. 

Currently, TK is managed by the National Recordal System which currently endorses a closed access policy for TK and that which is not in the public domain requires authorized access. Patrick Gillfillan of UCT has also highlighted a concern that innovators could get around formal protections by adapting the knowledge.

Traditional practitioners are also obliged to register with NIKSO. Tsiane said the registration of traditional healers and their specific purview was a key outcome.

“The local healers organisations haven’t been regulated to date and the Act will help people to know who X and Y are in the context of the law. We must have rules, ethics and a code of conduct in the scope of our practice.”

He said the act talks about four categories of traditional practitioners and this would help align the industry.

According to Tsiane, the department of Health was legally obliged to be involved in the process. He said on December 13, 2016, the panel would select a registrar to oversee the forthcoming meetings. Afro Leo report

Read More