Thursday 24 March 2011

Darren Olivier

Swartland SCA judgement - commentary

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.

Darren Olivier

Darren Olivier

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