China New Balance decision - lessons for Africa in #sandtondiscussion

China New Balance decision - lessons for Africa in #sandtondiscussion

By Afro Leo   Sunday, July 12, 2015   No comments:

Lita tells Afro-IP that this week's #sandtondiscussion turns east to consider a recent case where famous footwear and apparel brand New Balance lost a trade mark case in China and is ordered to pay over RMB 98 million (a whopping USD 15.7 million) in damages to a Zhou Lelan, a local shoe manufacturer and alleged trade mark hijacker, over the use of the translation of the New Balance trade mark. The case itself is summarized by Shanghai Patent & Trade Mark Law office here.

What does this case say for your brand strategy in China? What is the difference between a translation and a transliteration? What does this say for your brand in Africa, with an estimated 1500-2000 languages? You can join us to discuss these and other questions 9am CAT on twitter using #sandtondiscussion

During last week's discussion Isaac shared his views on the progress and effectiveness of utility model protection in Kenya before Eddie Hurter explained an exciting competition sponsored by Unisa, ZA Domain Name Registry and SAIIPL involving the possible future of Africa domain names. You can read more about that here.

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Chameleon controversy

Chameleon controversy

By Darren Olivier   Tuesday, March 30, 2010   No comments:

Against the backdrop of gorgeous wine estates Lovane and Jordan comes a fight over marks which are conceptually, chameleon (no pun intended). Key principles include the extent of protection for English words against Xhosa translated derivatives, evidence preparation and the link between passing off and infringement. Jeremy Speres who completed his LLM last year and recently joined Stellenbosh based firm Cluver Markotter found time to send Afro Leo this latest trade mark decision from the Western Cape and a very useful summary. You can decant the decision and the useful summary here and here: Judge Bozalek rules on Xhose translation of trade mark

Additional comment:

• The judge erred in suggesting that evidence is required to show actual confusion (see para 21) - a likelihood of confusion is sufficient.
• Did the judge also err that expert evidence is required to show a linguistic link between "lovane" and "ulovane" (also para 21) which seems at odds with para 6 which states that it is "common cause" the word "lovane" was derived from the xhosa word "ulovane" (perhaps he meant that the derivation was common cause but the impact on a consumer would not be - see also para 22)?
• Does the judge endorse the notion that because Xhosa-speaking people make up a minority of population (17.5%) it is more difficult to show a likelihood of confusion (see para 22)? If he did he must surely be incorrect.
• Counsel did not argue the "bait and switch" concept which is mooted (see Momberg & Els here) to be part of our law and goes something like this: Once Lovane baited the public with an image of a chameleon on its signage (which would further the conceptual similarity with the name "Lovane" and also the derivation of "Lovane" from "Ulovane") the mere removal of the chameleon image does not avoid further misrepresentation/passing off occurring. In fact, as the argument goes, Lovane would in those circumstances be required to go further than would ordinarily be the case to ensure that no confusion would occur ie it would be argued that they would be required to change their name too.
• The whole case would have been decided differently had Jordan filed for the protection of its name in Xhosa
• Does the protection afforded by word marks extend to all identical conceptual devices? Afro Leo expects not. Take for example a registration for CAT for shoes - it is unlikely stop a puma (PUMA) or panther (Slazenger) device being registered or used for say, shoes and vice versa.

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Egyptian Organization Makes Important Study Available in Arabic

Egyptian Organization Makes Important Study Available in Arabic

By Afro Ng'ombe   Thursday, August 20, 2009   No comments:

The Bibliotheca Alexandria A2K project in Egypt just announced release of an Arabic translation of Professors P. Bernt Hugenholtz and Ruth Okediji’s study on copyright limitations and exceptions.  ““Conceiving an International Instrument on Limitations and Exceptions to Copyright” looks at limitations and exceptions under Berne, in the context of the TRIPs three-step test and in relation to other areas that might influence exceptions.  The study also explores possibilities for new international instruments and makes recommendations for the future of limitations and exceptions.

Both the Arabic and English versions of the reports are released under a cc-by-nc-nd license.

A2K expressed special thanks to the authors for the ease in which it was able to obtain permission to translate the work.  It is very encouraging to see so much collaboration, an organization in Egypt obtaining permission from a Nigerian professor in the US and a professor in Amsterdam to translate an important study for the benefit of people across the Middle East and North Africa and around the world.  Kudos to all involved!

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Google strategy for Africa penetration

Google strategy for Africa penetration

By Darren Olivier   Thursday, February 28, 2008   No comments:

GOOGLE has to tailor its offerings to work better on cellphones if it is to make real headway in Africa, the group said yesterday according to the Business Day. In a continent with a dearth of computers, the cellphone is the only way most people can get online. “The majority of people coming online will be doing it through mobile. We have to find better ways to conduct a search over a mobile phone.” Google’s support for multiple languages sees it offer its search services in Afrikaans, Sesotho, Zulu and Xhosa. Merrill said he was keen to add SA’s other indigenous languages.

AFRO-IP adds that brand owners ought to consider registering translations of their trade marks to ensure they are properly protected as keywords, which in itself is a dynamic and unsettled area of trade mark law worldwide.

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