BOTSWANA: Registered trade marks are a defence to passing off

BOTSWANA: Registered trade marks are a defence to passing off

By Afro Leo   Wednesday, June 18, 2025   No comments:

On 27 March 2025 Judge Busang sitting in the High Court of Botswana at Lobatse handed down a judgment dismissing Specsaver Botswana’s claim for an interdict and other relief including punitive costs against Strategic Ideal Holdings (Pty) Limited (Spec-Savers South Africa’s licensee), based on passing off.

The case is notable, from a legal standpoint, because:

a) it is only the second reported passing off judgment in Botswana;

b) it affirms the value of a registered trade mark in Botswana, being a positive right i.e. a right to ownership and use of the trade mark, and not simply a negative right to stop others from using; and

c) it shows that litigants in a passing off case must meet the evidentiary thresholds for establishing reputation and the misrepresentation.

Specsavers Botswana had alleged the adoption of their mark SPECSAVERS in 1999 and use of the mark thereafter. Spec-Savers South Africa had registered their trade mark from 2001 and begun using it, through their licensee, in 2014. Specsavers Botswana claimed that they had established a reputation symbolised by the mark such that the use by Spec-Savers South Africa licensee of SPEC SAVERS was likely to cause deception or confusion.

Spec-Saver’s South Africa defended the application by challenging the evidence filed in support of the passing off claim and by arguing that they were entitled to use their registered trade mark SPEC SAVERS because the rights conferred on them by their trade mark registration, were positive.

Section 74 and 81 of Botswana’s Industrial Property Act No.8 of 2010 (the Act) states that:

"74. (1) The exclusive right to a mark under this Act shall be acquired by Registration in accordance with the provision under this Part.

81. (1) Registration of a mark shall confer on the registered owner, the right-

(a) to exclusive ownership of that mark;

(b) to prohibit third parties from using the mark; and

(c) to institute court proceedings against any person infringing his or her rights.”

The court referred to case law out of Botswana, Namibia and South Africa on the delict of passing off finding that Specsavers Botswana had failed to provide sufficient evidence of reputation and misrepresentation, and that there was no detailed explanation of how the Respondent's conduct caused confusion. Further, that Spec-Saver’s South Africa’s trade mark was lawfully registered, providing them with a positive right to use and own the trade mark. The case was therefore dismissed with costs, including costs of counsel, and is a notable win for Spec-Savers South Africa.

Specsavers (Pty) Limited has appealed the decision.

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A freedom to operate, sustainably.

A freedom to operate, sustainably.

By Darren Olivier   Sunday, July 30, 2023   No comments:

Last week I spent time in Botswana for a hearing. It also gave me an opportunity to pilot my first international flight. It’s a wonderful thing when two passions align in a way that is also sustainable, thanks to local innovation.

My daughter taught me about the fun of “Insta Reels” and this one I share with you now. I hope you enjoy it as much as we did capturing it!

Botswana is an impressive country. Its people are friendly, welcoming, and very capable. It is relatively small but vast (about 5% of South Africa’s population and 25% of its land mass) and an important business hub in the region. It is also home to a number of tourist attractions, particularly in the Okavango area.

Gaborone, the commercial capital, is open for business. Its skyline illuminates at night with brands of well-known eateries, banks, fashion houses and other commerce. Any exchange control is light, and the benefits of foreign direct investment are clear with an apparently, thriving middle class. Hotels are busy and their rates comparable, if not higher, than those in Johannesburg 300kms away, suggesting a healthy level of demand and investment.

The courts are stately and proudly bear “minimum standards of service” in their opening halls. Litigating in Botswana on intellectual property cases is somewhat familiar because their laws and procedures are largely based on the English system. That said, it is embryonic when it comes to the number of published decisions on this area of law and as a result, lean on advocacy and common law from South Africa. This is why we were present.

Getting there by road from South Africa is relatively painless except for border control which can lead to unpredictable, if not significant, delays. It is also not entirely stress free as road safety issues and hijackings (on the SA side) have been reported and naturally scare those who must travel between the countries. As a result, the country’s policing system has a no-tolerance approach which acts in stark contrast to their otherwise amiable demeanor. Necessary, it would seem, to protect what the country has nurtured.

Flying commercially is the preferred way of travel but it’s not inexpensive, and although it is a short hop, it can take as long as road travel once airport waiting times and clearance delays are considered. Although it is safer than road travel, it is significantly less sustainable for such a short trip. This is where a private plane becomes an option as it can be the most affordable, safe (compared to road travel), and sustainable option, especially if the plane is made by a company like Sling Aircraft, itself a wonderful example of South African innovation.

Sling Aircraft are based just south of Johannesburg and over the last two decades have made private plane ownership and flight relatively affordable for businesspeople with long commutes or requirements for local travel to tricky to reach places. A secondhand Sling 2 or 4 seat aircraft, for example, is no less affordable than an executive vehicle and has significantly less environmental impact. It runs on ordinary unleaded petrol and uses less fuel than an equivalent road trip. It also does not depreciate as fast a car and is simply a joy to travel in. It took just 1hr 20mins to travel the distance between the cities.

Of course, flying in small planes is not for everyone and although it is convenient, it is vulnerable to vagaries of the weather so careful planning is required. There is no perfect option when it comes to travel across our continent, but general aviation or small plane travel, marginalised in recent times, can make a comeback thanks to local innovators, like Sling Aircraft and others.

Flying oneself is an experience quite unlike any other and this aspect is not represented in a comparison of facts and figures between the different forms of transport. It is a privilege, a challenge, a responsibility, and a freedom, none of which can be measured. I am just grateful that my own journey to learn to fly, which started a few years ago, has culminated in this example of practical integration into my professional career, not only as a commuter option which I have been doing now for some time, but also to connect people, skills and highlight innovation, in a sustainable way.

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Even more news from Botswana: an early Beijing ratification

Even more news from Botswana: an early Beijing ratification

By Jeremy   Tuesday, December 03, 2013   No comments:

Following Caroline's post on Botswana yesterday, here, it seems that there's even more going on there than we'd imagined. A WIPO media release announces that the landlocked Republic is looking ahead, ratifying the Beijing Treaty on Audiovisual Performances.  Botswana is only the second country to do so, following Syria.  Under Article 26 of the Treaty, it will come into force three months after it receives its 30th ratification or accession. The media release looks like this:

Beijing Notification No. 2
Beijing Treaty on Audiovisual Performances

Ratification by the Republic of Botswana

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Republic of Botswana, on November 20, 2013, of its instrument of ratification of the Beijing Treaty on Audiovisual Performances, adopted at Beijing on June 24, 2012. 

The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached in accordance with Article 26 of the said Treaty.

November 20, 2013

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Botswana: in the news again

Botswana: in the news again

By Jeremy   Monday, September 24, 2012   No comments:

Last month Kingsley Egbuonu posted this round-up on Botswana and now that charming little country is in the news again, thanks to "A Brief Look At Botswana’s New IP Law", posted on the excellent Intellectual Property Watch site by Linda Daniels. A brief summary of Botswana's 2010 IP law, plus a few handy links, can be accessed here.

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Botswana's new law in force this week

Botswana's new law in force this week

By Jeremy   Monday, August 27, 2012   No comments:

Afro-IP understands that Botswana has now signed into effect the Regulations regarding  that country's new Industrial Property Act 2010.  Publication of these Regulations is expected later this week and they will be in force from this Saturday, 1 September 2012.

The new Regulations are quite wide-ranging and cover many areas of intellectual property. In particular:

* Pre-grant oppositions may now be made in respect of published patent applications;
* Patent Cooperation Treaty (PCT) applications are at last possible (Botswana acceded to the PCT in 2003.
* Utility model applications are now possible.
* Industrial design protection may no longer be obtained for designs that are functional; *
* Collective marks and trade names are now protected, and special recognition is given to the status of well-known trade marks;
* New legal provisions have been introduced with regard to geographical indications, unfair competition, traditional knowledge and handicrafts.

Official fees required for intellectual property registration are being increased by 50% -- presumably because the new law is 50% better than the old, says Afro Leo.

Source: newsletter of NJQ & Associates (Amman, Jordan)

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A review of African official IP websites: no.4 Botswana

A review of African official IP websites: no.4 Botswana

By Anonymous   Monday, August 06, 2012   No comments:

 

Apart from being the world’s greatest sporting event, the Olympic Games ceremony made this little Leo realise that there are 204 countries -- or 205 including the Independent Olympic Athletes -- present. This was indeed a great opportunity for some countries in Africa to come out of obscurity, thanks to the BBC's informative commentary.

Increasingly, most events are not just confined within enclosed settings: we can now share them, including our experiences, via various social media platforms, or if we are that interested, easily find out about them using search engines such as Google and bing. As information communication technology becomes, arguably, important to socio-economic growth, most things are becoming relevant; country information – particularly those in Africa – are becoming readily accessible; and the success of these countries can also be discussed as a going concern.

Afro-Leo feels that not many of our readers or those interested in African artworks in the UK, are aware that the Ministry of Youth, Sport and Culture (MYSC) and the Botswana Investment and Trade Centre (BITC) do have a stall set up to showcase Botswana's artistic creativity in Kensington Gardens, London, during the Games. According to this report, this Brand Botswana initiative has already attracted a lot of attention and there was an “overwhelming” demand for the works on show. It is also stated that the BITC has brought along brochures and booklets detailing various investment opportunities in Botswana. At the time of writing, the BITC had no website or social media presence.

Last year, Afro-IP also discovered that there was no official website for Botswana's IP office; 12 months later, it is unfortunate that this has not changed. Now you might realise why this little Leo chose to go round the circle to bring that news to you.

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See here for Botswana’s Amantie Montsho finishing fourth in the women's 400 meter final at London's Olympic Stadium. 

See here for 'Africa becomes land of opportunity', a piece urging law firms to tap into the continent's growth (the author reminds his readers not to treat Africa as a 'single' country -- well, this little Leo hopes that none of the lawyers reading that thought so in the first place).

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