THE CLEAR VU TRADE MARK SAGA: THE FENCING ENDS IN BLOEMFONTEIN

THE CLEAR VU TRADE MARK SAGA: THE FENCING ENDS IN BLOEMFONTEIN

By Afro Leo   Friday, December 22, 2017   No comments:

 

BACKGROUND

 

The legal battle regarding product names in the fencing industry might at last be over. This is the impression one gets from the latest episode in the CLEARVU trade mark war, being the ruling of the Supreme Court of Appeal (SCA) in an opposition matter involving the parties, reported here. 

 

The order of the lower court was:

 

“1.1. The registration of this mark shall give no right to the exclusive use of the word (sic) “clear” and “view” separately and apart from the mark;

1.2. The trademark registrant admits that the registration of this mark shall not debar others from the bona fide descriptive use in the course of trade of the words “clear view” and “view”.”
 

Readers will recall that Cochrane Steel had sued M-Systems for unlawful competition for bidding on the mark CLEARVU as an adword. Cochrane Steele lost, setting a precedent that the mere bidding on a competitor's mark as a keyword without more (eg it appearing in the ad text) is not unlawful competition. The High Court case is well covered by this blog and you can view those summaries here, here, here and on CNBC Africa, here.  In the Supreme Court of Appeal, decision here, M-Systems successfully defended the appeal by Cochrane Steel creating clarity that keyword bidding on a competitor's trade mark (on its own) is not passing off or unlawful competition in South Africa.

 

 

Cochrane Steel also lodged a complaint before the Advertising Standards Authority, which was rejected on the basis that the adwords do not constitute ”advertisements”, a finding set out here.

 

The scene then moved back to the High Court, dealing with the registry's acceptance of Cochrane Steel's CLEARVU trade mark without any disclaimers or endorsements in respect of CLEAR, VU and/or CLEAR VIEW. M-Systems also claimed that the mark should not have been accepted because it described the intended purpose of a fence, namely one that provides a clear view, and that the evidence on file did not support a finding that the mark had acquired a secondary meaning.  In the judgment, discussed here, the court ruled in favour of both parties on some aspects, but significantly exclusive rights to “clear” and “vu” had to be disclaimed.  This discussion deals with the appeal on this ruling.

 

 

THE SCA OPPOSITION JUDGMENT

 

 

Cochrane Steel applied for the registration of the mark CLEARVU in:
 

 

1. Class 6 (in respect of non-electric cables and wires of common metal; metal fences; metal mesh; pipes and tubes of metal)

 
 

2. Class 37 (in relation to building, construction, repair and installation services.

The opponent was of course M-Systems.
 

The ground of opposition was that the mark was not registerable in that:
 

 

1.  It consists exclusively of an indication which may serve in trade to designate the kind, quality, intended purpose or other characteristics of the goods or services (s 10(2)(b) of the Trade Marks Act 194 of 1993;

 

 

2.  It is not capable of distinguishing the goods and services for which it is to be used (ss 9(1) and 10(2)(a) of the Act).

 
 

One question raised is how far the misspelling contained in the CLEARVU mark can go.  The following “view” on the situation in the market is instructive:

 

 

“[8] M-Systems, in its objection to the mark, supplied material from websites operated by a number of other companies within the security barrier industry in which they use the words ‘clear’ and ‘view’ in describing their fencing products. One company is called C-Thru Fencing which equates to fencing through which one has a view. Another competitor, Betafence, offers products called ‘Betaview’. Trellidor, also referred to as a competing company produced a product called ‘Trellidor Clear Guard’. Trellidor describes its products as ‘security screens that provide a clear view’. They go on to say that their products enable users to ‘enjoy the view without feeling vulnerable’, ‘allow unobstructed views of the outdoors’, ‘appear to be invisible while helping to protect against unwanted intruders’ and ‘provide security without detracting from the views or aesthetics of the premises’. Clear View Security Solutions, yet another competitor that sells a range of products which they describe as ‘clear security solutions’, including ‘clear bars’, ‘clear armed bars’ and ‘clear gates’. It explains on its website that all of its products ‘ensure that no light or view is lost’.”

 

 

To use the word, clearly, the concept of a see-through product is in wide use in the industry. 

 
 

The court referred to section 15 of the Act, and various decisions dealing with the issues of disclaimers and admissions.  It was mentioned that the use of disclaimed matter cannot amount to infringement (paragraph 13).  Mention was also made of the unique practice of entering admissions, specifically where misspellings of words were concerned (paragraph 14).

 

 

The court found particular guidance in the Distillers case:
 

“[19] In determining whether a discretion should be exercised in favour of the entry of  a disclaimer and admission, it is necessary to have regard to Distillers Corporation (SA) Ltd v S.A. Breweries Ltd & another; Oude Meester Groep Bpk. & another v S.A. Breweries Ltd 1976 (3) SA 514 (A). There this court was considering, in relation to an application for an entry for disclaimers, the composite trade mark ‘Oude Meester’, which had undoubtedly become distinctive…

 
 

The court, whilst acknowledging that the mark ‘Oude Meester’, by its use as a whole had become distinctive, held that such use does not ‘ordinarily or necessarily mean that Meester per se has thereby become distinctive’. It found that the court below had accordingly correctly entered disclaimers.

 

[20] In Distillers, Trollip JA also had to consider an order similar in form to para 1.2 in the present case. Trollip JA stated that what was there under consideration was not a disclaimer in the usual form. He had regard to the contention on behalf of one of the parties that it was not a disclaimer, but rather an ‘admission’. Noting that the entry of admissions was a peculiarly South African practice, particularly where the trade mark contains words that are regarded as being reasonably required for use in the trade, he stated that the purport or effect of admissions ‘does not appear to be entirely clear; and it is difficult to understand on what basis the distinction between disclaimers and admissions is drawn’. He proceeded to construe the ‘admission’ as a disclaimer and in that regard said the following:

 

‘That construction does not, in my view, do any violence to the wording or effect of the entry. For by not debarring others from using Meester, the entry in effect disclaims Distillers’ right to the exclusive use thereof.”

 

 

Applying these dicta (paragraph 21), the SCA stated that “the “VU” in the composite mark “CLEARVU”, is a deliberate misspelling of the ordinary word “view” and is understandable in light of the nature of the product and what it intends to convey.” The argument of Cochrane that it does not constitute a misspelling of the ordinary English word “view”, but that it is a “coined word which just happens to be the phonetic equivalent of the ordinary English word ‘view’ is to strain to avoid the implication that commonly, admissions are entered when there is a misspelling of a word and to seek a monopoly that extends beyond that which is acceptable.” Also, as per Webster and Page South African Law of Trade Marks para 9.20 at 9-17, service issue 19, “the phonetic equivalent of a non-distinctive word is itself non-distinctive and it would seem to follow that if the word itself is one that ought to be disclaimed then its phonetic equivalent should also be disclaimed.”

 

 

In paragraph 22 the court stated that neither Cochrane, nor any other trader, is entitled to appropriate exclusively the ordinary English words “clear” and “view”, which, in effect, constitute the composite mark. In addition, those words are commonly used descriptively in relation to fencing products.
 

 

The conclusion of the SCA was to accept the order of the court a quo, but it was stated though that the words “the trade mark registrant admits” must be deleted.
 

In my next post, I interview fellow blogger Darren who represented M-Systems to find out his thoughts on what this all means, on a practical level.
 

 

Prof Wim Alberts

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CLEARVU Opposition Decision

CLEARVU Opposition Decision

By Afro Leo   Tuesday, August 16, 2016   No comments:

The latest in the trade mark battles between security fence competitors, Cochrane Steel and M-Systems, are the findings in the opposition brought by M-Systems against the Registry's acceptance of Cochrane Steel's CLEARVU trade mark without any disclaimers or endorsements in respect of CLEAR, VU and/or CLEAR VIEW. M-Systems also claimed that the mark should not have been accepted because it described the intended purpose of a fence, namely one that provides a clear view, and that the evidence on file did not support a finding that the mark had acquired a secondary meaning.

 

Readers will recall that market leader Cochrane Steel has consistently attacked its competitor M-Systems' online advertising campaign which had bid on its CLEARVU trade mark as a keyword. The matter was brought before the High Court, the Advertising Standards Authority and the Supreme Court of Appeal. Cochrane Steel was unable to persuade any of the tribunals that there was anything wrong with M-Systems' campaign and in the end created Africa's first SCA case on keyword bidding. These decisions are reported on here, here and here.

 

The opposition decision, handed down on Thursday last week, ruled in favour of M-Systems insofar that:

• there is some validity in the submission that the word CLEARVU is "descriptive of the characteristics of steel fencing" (para 38);
• the mark should have been accepted endorsed with disclaimers and endorsements (para 52).

However, the judge also held in favour of Cochrane Steel that their mark CLEARVU was distinctive of other goods in the specification which meant that it could be accepted for fences notwithstanding that the word the descriptive nature of the word (para 38). Accepting that she may be incorrect in this conclusion (para 40), the judge held that the mark had, in any event, acquired a secondary meaning through use (para 50) allowing it to be registered.

 

On the issue of costs, despite upholding the Opponent's opposition in respect of the endorsements, the judge ordered that costs be borne by them. Both parties have until the end of the month to appeal the decision.

 

The conditions to be endorsed against the registration of the mark are that:

 

"The registration of this mark shall give no right to the exclusive use of the word “clear” and “view “separately and apart from the mark; and

 

The trademark registrant admits that the registration of this mark shall not debar others from the bona fide descriptive use in the course of trade of the words “clear view” and “view”."

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RSA: Condonation of late TM opposition rejected

RSA: Condonation of late TM opposition rejected

By Jeremy Speres   Tuesday, June 10, 2014   No comments:

To those not interested in South African trade mark opposition procedure, I say move on quickly. This piece is sure to be just about the most boring thing you’ve ever read.  To those who are interested, you may want to move on anyway, given that this will only give you something else to worry about!

The Registrar of Trade Marks referred this opposition matter to the High Court in Pretoria, as the Registrar has been doing of late (reported here).  Essentially, the opponent had lodged its notice of opposition more than a month after the close of the opposition period, but applied for condonation of the late lodging.  The Court rejected the condonation application, finding that condonation of late filed oppositions is not competent in terms of local legislation.  Cue terror by trade mark attorneys throughout the land!

The Court considered that section 45(3) of the Trade Marks Act permits the Registrar to extend any time period on application by the relevant person, whether that application is filed before or after expiration of the period, unless otherwise expressly provided. 

The Court then turned to section 29(1)(a), which requires the Registrar to register a mark when no opposition has been filed and the opposition period has closed.  It was reasoned that this section is an express provision, and, in terms of the underlined proviso to section 45(3), the relevant period cannot be extended as a result.

The Court did consider Regulations 52(2) and (3), which provide that the Registrar may, on application, extend any time period prescribed in the Regulations, even though such application is not made until after the expiry of the relevant term.  However, the Court reasoned that those provisions relate to other time limits besides the time limit to oppose a mark, given that, if condonation of a late filed opposition were to be permitted, the Registrar could never register a mark when the opposition period closes as, at any time, the registration could be overturned and opposed.

Two counterpoints could be raised here.  Firstly, it is not clear whether the proviso to section 45(3) – “unless otherwise expressly provided” – is met by section 29(1)(a).  That latter section does not expressly state that the opposition period cannot be extended after the fact.  Secondly, the general structure of Regulation 52 seems to suggest that Regulations 52(2) and (3) were intended to apply to extensions of the opposition period (which are covered in Regulation 52(1)).

However, it is to be noted that the court adopted a similar line of reasoning to that previously adopted by the same court in Weekly Property Trader v Erasmus 2002 BIP 303 (T).  That case concerned a failure to respond timeously to an office action issued by the Registry, which, in terms of a specific provision of the Act, leads to the abandonment of the application.  The court accepted that that specific abandonment provision constituted an express provision for the purposes of section 45(3), i.e., an express provision excluding the Registrar’s general discretion to extend time periods.

All in all, not very exhilarating stuff, but disregard this at your peril!

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Vienetta vendetta ends in triumph for opponent

Vienetta vendetta ends in triumph for opponent

By Jeremy   Wednesday, August 28, 2013   No comments:

From the most recent email circular of NJQ & Associates comes news of a recent trade mark opposition from Morocco. In essence, on 23 March 2012 a local company called Biljar El Houssine applied to register as a trade mark the word mark VIENETTA SECRET for goods in Class 25. The application was speedily published for opposition on 12 April 2012. During the two-month window for the filing of oppositions, Turkish manufacturer Suleyman Giyim Sanayi Ve Ticaret Limited filed an opposition on the following grounds:

• the applied-for mark was similar to the opponent's VIENETTA SECRET mark, which had been registered in Morocco for goods in Classes 24, 25, and 35 since March 2011;

• the mark VIENETTA SECRET had been registered in the opponent's country of origin (i.e. Turkey) since 2006 and

• the applied-for mark was an exact replica of the opponent's trade mark in terms of pronunciation, spelling and general appearance.

After full litigation, including the consideration of the facts mentioned above, the trade mark Registrar issued his decision to uphold the opposition and refuse registration.

NJQ & Associates represented the successful opponent in these proceedings.

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Morocco: ABSOLUT EVENTS is absolutely opposed

Morocco: ABSOLUT EVENTS is absolutely opposed

By Jeremy   Wednesday, July 31, 2013   No comments:

From the email newsletter of Jordan-based IP practice NJQ & Associates comes news that Enjoy Media, a Moroccan company, filed a trade mark application for ABSOLUT EVENTS for goods in class 16 back in February 2012. After the application was published for opposition on 8 March 2012 (there's a window of two months for opposition purposes), V&S Vin & Sprit Aktiebolag, the Swedish producer of ABSOLUT vodka, opposed the application. This opposition was based on the following grounds:

• Similarity to Vin & Sprit's mark ABSOLUT, registered in Morocco for goods in classes 16, 35, 41, and 43 since January 2010;

• The mark ABSOLUT was previously registered in its country of origin (i.e. Sweden) back in 1993, and

• The fact that ABSOLUT is a well-known trade mark which enjoys has a world-wide reputation.

Having heard both parties in full, the Register for Trade Marks upheld the opposition.

Note: NJQ & Associates acted for the successful party in these proceedings.

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Kenya: DARK & NOT LOVELY day for L’Oreal in Trade Mark dispute

Kenya: DARK & NOT LOVELY day for L’Oreal in Trade Mark dispute

By Njuguna   Friday, June 08, 2012   No comments:

opposing mark

Opposed mark

In L’Oreal v Interconsumer Products Limited (unreported), the High Court of Kenya in a ruling delivered on 21^st February 2012, dismissed an appeal filed by L’oreal against the decision of the Registrar of Trademarks rejecting L’Oreal’s opposition to the registration of the mark NICE & LOVELY HERBAL OIL MOISTURIZER (opposed mark).

On 28^th March 2006, Interconsumer applied to register the opposed mark in class 3 of the Nice Classification.  L’Oreal opposed the application based on a variety of its earlier marks registered between 1992 and 2004, notably:

DARK AND LOVELY

DARK AND LOVELY CHOLESTEROL PLUS

DARK AND LOVELY RESTORE & SHINE OIL MOISTURIZER CRÈME

DARK AND LOVELY DL PRECISE

DARK AND LOVELY ULTRA CHOLESTEROL.

In addition to the opposed mark Interconsumer had also registered the mark NICE n LOVELY in 2002, which was not in dispute.

The Registrar on 27^th September 2010 rejected the opposition. L’Oreal had argued before the Registrar that the opposed mark was similar to the earlier marks, and that its products were well known in Kenya and as a result, the opposed mark would be deceptive and cause confusion in the market.

After hearing the parties, the registrar concluded that the mark NICE & LOVELY was not similar to DARK AND LOVELY and there could be no confusion under section 14 and 15 of the Trade Marks Act. The Registrar also concluded that L’Oreal had failed to show that its trademark was well known in Kenya. The Registrar further found that there had been honest concurrent use and both marks could co-exist in the Register.

L’Oreal appealed to the High Court primarily on the grounds that;   

The register had misdirected herself by reducing the opposition to a comparison of the marks NICE & LOVELY and DARK AND LOVELY.

The Court agreed with the registrar’s finding. The Court also approved the registrar’s reliance on the test for comparing word marks laid down by Parker J in the Pianoist case [1906] 23 RPC. The Court also agreed with the Registrar that the opposing mark was not strong because each of the words DARK and LOVELY had been disclaimed as a condition of registration of the mark. On the appellant’s reliance on a decision by USPTO’s Trademark Trial and Appeal Board, which had sustained opposition in a similar matter (opposition No. 91185552), the Court distinguished the two cases in that the USPTO’s decision was largely informed by the fact that there was no evidence of other similar marks in the USPTO’s register. 

The Court also considered but distinguished the South African case of Plascon-Evans Paints (TVL) Ltd. v Van Riebeck Paints (Pty) Ltd,  1984 (3) SA 623, relating to the marks MICATEX and MIKACOTE in which the two marks were found to be similar and likely to cause confusion. 

No evidence was tendered to show that Interconsumer had used the mark NICE & LOVELY HERBAL OIL MOISTURIZER to support the Registrar’s finding on honest concurrent use.

The Court agreed with the registrar’s finding that the respondent had used the mark NICE and LOVELY since 1^st March 1999 and the appellant had not tendered any evidence to show that it had objected to the use of the mark in the last five years. As a result, the Registrar could not be faulted for concluding that the appellant had acquiesced in the respondent’s use of the mark.

The registrar did not consider L’Oreal’s evidence of use in Kenya of the mark DARK AND LOVELY RESTORE & SHINE OIL MOISTURIZER CRÈME and therefore the Registrar erred in not finding that the mark was well known in Kenya.

The Court disagreed with the registrar’s finding that the appellant had not proved that the mark DARK & LOVELY is well known in Kenya. The Court observed that between 2000 and 2006 the appellant marketed its goods in Kenya under the opposing trademark and had spent 102,000 SA Rand in 2004 and 408,000 SA Rand in 2005 in promoting the product in Kenya. Surprisingly the Court also concluded that both marks were well known in Kenya and there has been honest concurrent use!

The registrar erred in finding the phrases “& lovely” or “and lovely” to be descriptive of goods in class 3.

The Court agreed with the Registrar who had considered the fact that there were many marks in the Register containing the two phrases and registered by different proprietors who had also disclaimed the word LOVELY - since it was descriptive of goods in class 3. The Court observed that, “when trade marks with a common element are compared it also has to be established whether there are other trademarks on the register and used by different owners that have the same common element”. If so, “the consumer will have become accustomed to the use of this element by different proprietor and will no longer pay special attention to it as a distinctive element of the mark”.

The registrar erred in finding the mark NICE & LOVELY HERBAL OIL MOISTURIZER not similar to DARK AND LOVELY RESTORE & SHINE OIL MOISTURIZER CRÈME.

The Court did not consider this ground, but even if it had done so, perhaps it could not have made any difference in the outcome considering the descriptive elements in both marks.

Lessons for trade mark owners

Trademark owners should be aware of the risks of registering trademarks “held” by disclaimers or readily agreeing to put disclaimers as a condition of acceptance of trademark applications by the Registrar. A disclaimer could, in adulthood, turn out to be the “Achilles heel” of the trademark - just like the Greek warrior Achilles who as a baby his mother tried to make him immortal by bathing him in a magical river but the heel by which she held him remained his weakest point at the siege of Troy.

Likewise, trademarks owners should be wary of trademarks with non-distinctive elements as those elements are likely to be ignored during opposition or infringement proceedings.

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