Wednesday 4 August 2010

Darren Olivier

RSA Passing off decision - cleaning up languages issues?

In Tsebo Health CC v Eternal City Trading 529 CC the Free State High Court based in Bloemfontein was called upon to decide whether the use of Ya Hlêkisa (and related get-up) in connection with a herbal cleansing agent amounted to passing off. Tsebo Health CC claimed that such use would lead to confusion as a result of the reputation it has in and to its herbal cleansing agent called Hleka. The judge held that passing off had been established and it is worth reading the judgement at para 14 to understand the reasoning.

The case is useful in a number of respects; in particular because it grapples with the protection afforded to descriptive markings (Hleka means "clean") in some but not all of South Africa's 11 official languages - how does RSA law deal with a situation where passing off could occur in some languages but not others?

The word Hleka means "clean" in Sotho, Setswana and Sepedi which is an inherently descriptive and weak mark for a cleansing agent in those languages with a poor ability to distinguish one cleansing agent from another. Nonetheless, the judge held that the mark was protectable, primarily, because in the other 8 national languages the mark would not readily be understood and because in some geographical areas Sotho, Setswana and Sepedi were not common.

Afro Leo senses a difficulty with this reasoning because it naturally discriminates against certain sectors of the community. He wonders whether the judgement should have reflected that the injunction was limited to areas where Sotho, Setswana and Sepedi were not common or otherwise reasoned that those speaking the other languages constituted a "substantial number of members of the public" to satisfy the test (although in the latter instance there would still be difficulties of discrimination and no evidence appears to have been led to assist with that reasoning)?

One wonders now too if Tsebo Health CC were to apply to register the trade mark "Hleka" for cleansing agents. The Registry would ask for its meaning and no doubt raise an objection that the mark is descriptive. In order to overcome that objection evidence would need to be lead that it had acquired a secondary meaning. In the present case the Judge accepted self serving evidence of reputation but would the Registry do that too, even if that evidence could not show that in Sotho, Setswana and Sepedi the mark had achieved a secondary meaning (which the evidence did not appear to show)? The distinction between acknowledging a secondary meaning under passing off and allowing a trade mark registration is that a trade mark registration would confer rights enforceable across the entire country whereas passing off rights could be limited to areas in which Sotho, Setswana and Sepedi were not spoken.

Despite the fact that RSA has always had numerous languages there are few trade mark cases that deal with how the courts treat them. This could be because English and Afrikaans have traditionally been the languages of formal trade. Things are changing: the Google search engine, for example, allows one to search in several other national languages thereby increasing the importance of local language search terms, the increase in spending power of those speaking other national languages, the elevation of those languages to national languages (since 1994 or so) and the relative size of the population who speak certain of the other national languages all raise the importance of a number of the national languages.

Perhaps it is no surprise then that this is the second case this year where confusion between languages has been considered - see, for example Chameleon Controversy. Afro Leo predicts a rise in filings for translations and local brands and would welcome commentary. Is the EU approach (see for example the Matratzen saga), for example, a useful guideline? Perhaps not.

Darren Olivier

Darren Olivier

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