10 Reasons to follow European approach

10 Reasons to follow European approach

By Darren Olivier   Monday, July 02, 2012   No comments:

Using RSA as an example, this post makes a case for a more simplified approach to the trade mark infringement test. It recommends that the formulaic approach to the “global appreciation test” adopted in Europe, as a handy checklist for African adjudicators.

Here are ten reasons to support the proposition (all relating to RSA – Africa’s most active country for trade mark enforcement - but probably applicable across for most of Africa):

1. Since 2009, two out of every three cases with a trade mark infringement aspect have been overturned on appeal (Adcock, Puma (infringement test wrongly applied - even though appeal dismissed), KG, Century City) indicating that lower courts are getting it wrong more often than they are getting it right.
2. A number of other cases not taken on appeal have been criticised on this blog for incorrectly having applied trade mark laws (eg Amarula, Zonquasdrift, Soulsa, Adidas) also indicating that the lower court's understanding is probably not as it should be.
3. There are numerous opposition cases at the Trade Mark registry waiting adjudication. At the current rate the backlog will take four years to clear. As opposition and infringement tests are similar, a simpler approach could speed up the process. In addition, greater alignment with Europe could provide access to a larger pool of skilled adjudicators to assist if necessary.
4. Although trade mark litigation is alive and well there is no centralised IP court or specialist IP judges in the country meaning that many judges are called upon to decide trade mark cases for the first time, as single judges in the High Court.
5. IP courses at Universities continue to be elective so most graduates have never been exposed to the intricacies of trade mark law. The graduates become advocates (from whose ranks Judges are generally selected) and attorneys running trade mark cases.
6. There are only a handful of specialist IP advocates and firms in the country dealing (though not exclusively) with an area of law that is one of the most litigated areas in the country, and growing worldwide (the number of trade mark filings across major registries continues to increase year on year).
7. RSA law was amended in 1993 to bring it more in line with the European Harmonization Directive. The wording of the Directive and RSA trade mark legislation is very similar.
8. The European approach is designed to interpret a trade mark infringement test that applies across 27 Member States and many more languages and cultures. The Rainbow Nation has a similar breadth of diversity with eleven national languages and many more cultures. In other words European compromise in the interpretation of the test would be helpful to us in Africa.
9. Over the past 16 years the highest court in Europe has been called upon to decide the interpretation of the Harmonization Directive and the infringement test at a very rapid and regular rate. Since 2009 there have been over 100 trade mark cases dealt with by the highest European court compared to a relatively low, 6 in RSA.



Why a quagga when you have a zebra?

10. The Supreme Court of Appeal in Cowbell (see, eg para 10) confirms the adoption of the European “global appreciation” approach in Sabel V Puma, in principle, as the basis for applying the local infringement test, so there is clearance from the SCA to use the European approach.

The upshot of all of this is that a formulaic approach has been developed in Europe and is well applied, most notably by the Community Trade Mark Office. The frequent European interpretation of the test would be more useful if we more closely aligned. Afro-IP therefore intends to unpack the European test as a check list, in an upcoming post.

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Swartland SCA judgement - commentary

Swartland SCA judgement - commentary

By Darren Olivier   Thursday, March 24, 2011   No comments:

Afro Leo has received a note (see below) from live-wire Jeremy Speres (Cluver Markotter) on the recent SCA Swartland judgement. 


To the uninitiated, the Swartland region is an incredibly beautiful area near Cape Town. It (including the more famous Stellenbosch) produces great wine, great "rooibos" and great IP issues, not least involving geographical indications, grape varieties and genericides (the one that does not fall into class 5). There is no shortage of parody either (see earlier post here), a Techno Park for hard IP enthusiasts, the Woordfees (word feast) if you are into copyright and a growing academic IP fraternity (Dr Dean is now lecturing out of Stellenbosch University). The combination can be quite intoxicating even if you are not based there, as our learned friends in Bloemfontein recently found out adjudicating on the issues raised in "Swartland":  


"[The Swartland decision is a] nice short judgment tying in with the Century City matter concerning geographical terms... here’s two points I found interesting:

1. The court found that the long and extensive use of the SWARTLAND mark saved the mark from expungement in terms of s 10(2)(b), despite the fact that the court found the mark to be prima facie liable to expungement as a sign that may serve to indicate the geographical origin of the goods and despite the fact that the Swartland region is certainly associated in the minds of consumers with wine (para 15). This point wasn’t dealt with directly in Century City and is sure to give some relief to the holders of geographical marks concerned with the enforceability of their marks. Despite the ruling, it also highlights the practical pitfalls of adopting a geographical mark as one’s own – others will always be tempted to use it (and may well be more inclined to feel they are entitled to do so) and the chances of having to litigate over your mark, and the uncertainty surrounding its enforceability, are heightened.

2. The Appellant took the cunning, yet ultimately unsuccessful, point that the SWARTLAND mark should be expunged as a mark contrary to law in terms of s 10(12). The reasoning being that the mark was contrary to s 11(3)(a)(i) of the Liquor Products Act which provides that, unless otherwise authorised, no person may use a wine of origin designation in connection with wine, with the Swartland being such a designated area. The point failed because the SWARTLAND mark was in use prior to the commencement of this section, however it does highlight the interesting interplay between the Trade Marks Act and other legislation, such as the Liquor Products Act, which can easily be overlooked in the registration process. The new food labelling regulations passed in terms of the Foodstuffs, Cosmetics and Disinfectants Act as well as the proposed regulations regarding the labelling of goods in terms of the Consumer Protection Act will no doubt provide applicants and the Registrar with some additional headaches."


Thank Jeremy!


Following on from my earlier post on exchange control this week, readers may be interested in this summary provided by Adams & Adams who were involved in the case.

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Monday morsels

Monday morsels

By Darren Olivier   Monday, November 30, 2009   No comments:

Two Supreme Court of Appeal (SCA) judgments were handed down in South Africa last week. The High Court decisions in the Turbek KG matter (see Afro-IP report here) and Century City (see Afro-IP report here) have both been overruled by the wise sitting in Bloemfontein. Afro Leo is waiting for them to be published on Saflii so that he can link to them. Both cases involve appeals by close corporations (a type of legal entity created to enhance small business) illustrating affordable access to the SCA (South Africa's highest commercial court). The cases also show the relatively good speed of the appeal process (approximately one year) but, worryingly, that three out of the four recent High Court trade mark decisions taken on appeal to the SCA, have been overturned. The Turbek decision is a success for Nolwazi Gcaba who counselled the appellant.

The latest attempt by a East African legal drafters to find a legal home for the stray, Traditional Knowledge and Culture, under constitutional law has been met with a fair degree of criticism. This report by the Daily Nation entitled "Culture can't be captured in any constitution" makes some interesting observations and suggests, somewhat ironically, that traditional knowledge is better protected under existing intellectual property laws.

(Right: anyone got a home for Tradknow?)

In response to questions from the media regarding Fifa’s Rights Protection Programme, the City of Cape Town has clarified the position of local businesses regarding the commercial exploitation of the 2010 Fifa World Cup Final Draw on 4 December. (Business as usual for local business)

The 4th Kenya International Film Festival held in October was, according to The East African, an impossibly ambitious and imaginative project. However, it reports that film production is growing exponentially in the region and that the agenda included a workshop on intellectual property protection.

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South Africa: The Century City Case

South Africa: The Century City Case

By Darren Olivier   Wednesday, March 18, 2009   2 comments:

Afro Leo had the recent delight of reading Judge Davis’s decision in The Century City case[i]. Briefly, Century City Property Owners’ Association (“Applicant”) sued Century City Apartments Property Service CC (“Respondent”) for use of the trade mark CENTURY CITY on the grounds of trade mark infringement, passing off and under close corporation legislation. Respondent defended by claiming that the registered trade mark for CENTURY CITY should be cancelled because it is a place name and that its use of Century City constitutes bona fide use of the name of its place of business and/or is descriptive and not likely to deceive or confuse. Century City is an imposing development which dominates Northern Cape Town. Davis J held in favour of the Applicant on all counts but not before illustrating the issues with a reference to a humorous letter from Groucho Marx to Jack Warner following a threat by Warner Bros. Studio to stop use of the title of the film A Night in Casablanca on the basis of alleged rights in the name Casablanca.

Quoting from the Century case:

“the meaning of Century City flows directly from the development of a piece of land located in Montague Gardens. The meaning of Century City is inextricably linked to this particular development. The right that flows therefrom emerged from the nature of the development rather than from a dictionary meaning or a geographical location.”

“The essential characteristic, for which he [Respondent] contends, is they are ‘Century City Apartments’ not that they are necessarily located in Century City. The descriptive power is connoted in the words ‘Century City’. Hence this phrase seeks to exploit the value which is inherent in the trade mark belonging to applicant.”

The decision endorses the importance of registering trade marks. If this case was brought on passing off alone it would have been more difficult for the Applicant to succeed and more risky to prosecute. The decision also highlights that developers have an ongoing need to ensure that names of their creations are properly used, on a continual basis. That said, with all the name changes and new developments in South Africa over the last decade there must be a fine line between what is actually a geographical location and a proprietory development. For example, what if Century City was in fact a government funded housing development for the re-settlement of a shanty town, which gave birth to a Century City Estate Agency. In the same way that a Johannesburg Estate Agency would not infringe trade mark rights in the word Johannesburg, Century City Estate Agency would surely not infringe trade mark rights in Century City (in that example)?

It is not clear whether the case has been appealed.

[i] Century City Property Owners Association (A Section 21 Company) v Century City Apartments Property Services CC and Others; Century City Apartments Property Services CC v Century City Property Owners Association ( A Section 21 Company) and Another (17225/2005) [2008] ZAWCHC 63

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