Thursday, 20 February 2014

Darren Olivier

RSA case update: Firstrand v First Central & Moneyweb v Media24

Thanks to Jeremy Speres (Floor Swart) for this guest post:

When I began reading this judgement I was desperately looking for a distraction from my disappointment at Liverpool’s exit from the FA Cup at the hands of referee Howard Webb, assisted by Arsenal.  I had heard that the judgement involved FirstRand Bank seeking revocation of a registration for a device mark incorporating FIRST CENTRAL INSURANCE.  FirstRand of course is the owner of various registrations incorporating FIRST.  I was therefore hoping for a juicy read covering issues like laudatory marks and perhaps some clarity on the “series principle” and whether Judge Harms’ comments in the Upjohn and Cowbell cases regarding that principle were obiter (as argued in the McDonalds case).  Alas, it was not to be, but the judgement was interesting for two other reasons.

Form of TM application

looks clear to me!
Firstly, FirstRand had sought revocation on the basis of a provision that is not commonly encountered – Regulation 13(4) (a year’s free subscription to Afro-IP for the first one to recall the provision in the comments! - hint, click here).  Essentially, the regulation requires representations of marks to be clear and distinct.  Firstrand argued that parts of the mark in question were obscured and unidentifiable and presented a photocopy of the Register in evidence.  The court rejected this argument for the following reasons: a) The court could not compare the photocopy with the actual register; b) the regulation permits the Registrar to call for additional representations if not satisfied, which did not occur, indicating that the Registrar was satisfied; and c) the court applied the section 51 presumption that registration is prima facie evidence of validity.  It seems that the burden of rectifying the register on the basis of a contravention of Regulation 13(4), and perhaps, by extrapolation, other “manner and form” type regulations, is a heavy one!

Intent to use

Secondly, FirstRand sought revocation on the basis of section 27(1)(a), which provides for revocation where the mark was registered without any bona fide intention that it would be used and no use has in fact been made of the mark.  The owner of the mark could only adduce evidence of a handful of insurance claims and some correspondence as proof of use.  Interestingly, the court found it telling that a practising attorney deposed to the respondent’s affidavit and would have appreciated the need to provide substantial evidence of use and yet was unable to do so.  Ultimately, the court found that the respondent had “no serious intention of carrying on a trade as a commercial enterprise” and granted the application for revocation.  The court cited the judgement in the recent New Balance decision where it was stated that “clear and compelling” evidence of use is required and allegations that are “sparse, ambiguous or lacking in conviction” will not be accepted.  This case again highlights that, although use on a substantial scale is not required, courts are prepared to interpret the requirement of bona fide use strictly, against use that may on the surface seem legitimate but that ultimately does not exhibit a serious intention to trade commercially. [Ed also bringing RSA more in line with European decisions on this issue.]

Moneyweb v Media24

In a totally unrelated matter, those who have been following the fascinating Moneyweb v Media 24 dispute involving aggregation and copyright should take the time to read Roger Hislop’s well-reasoned if not somewhat polarising piece on, but not before they’ve read the answering papers filed by Media 24 in December.  In fact, Roger’s piece is so assured that I for one wouldn’t be surprised to find some of his arguments in the replying papers!  To whet your appetite and perhaps give you an idea of what’s at stake, here’s what Roger believes will happen if the court and the media don’t act to prevent the kind of churnalism Media 24 is accused of:

“And then our society will no longer have a Fourth Estate with the will and the skills to crack open the Defencex scandal, penetrate the e-toll spin, or hack through the Zuma spy tape evasions. We will just have 5 Mind Blowing Things You Never Knew About Belly Fat.”

Darren Olivier

Darren Olivier

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