South Africa

How the next South African government will impact trademark professionals

The people of South Africa took to the polls last week, with the country’s president Cyril Ramaphosa leading the ANC party to victory with its lowest majority ever. We explore what trademark practitioners should expect from the ANC’s next five years.

How the next South African government will impact trademark professionals
<strong>South African IPO recovers CIPRO domain after cybersecurity concerns </strong>
13 Sep 2018

South African IPO recovers CIPRO domain after cybersecurity concerns

Fears over potential phishing attacks were sparked last month when it was revealed that a domain name previously used by South Africa's Companies and Intellectual Property Commission had been purchased by an individual in Mexico.

<p>Trump, Brexit and Korean reunification: the political issues weighing on the minds of trademark practitioners</p>
7 Apr 2018

Trump, Brexit and Korean reunification: the political issues weighing on the minds of trademark practitioners

​​​​​​​Research from <em>World Trademark Review</em> reveals the political issues that counsel say could significantly impact enforcement efforts, both now and in the future.

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8 Jul 2020

Enforcement in Africa: key qualities of a continent-wide brand protection strategy

WTR traverses the whole of Africa to provide brand owners with a comprehensive guide to brand protection across the region. Read more

14 May 2020

SUGARLESS v SUGARLEAN: Supreme Court of Appeal explores fundamental issues of IP law

In Quad Africa Energy (Pty) Ltd v The Sugarless Company (Pty) Ltd, South Africa’s Supreme Court of Appeal has considered the fine balance which must be found between the monopoly granted by IP rights and fair trade and competition. Read more

15 Oct 2019

Broader protection for GIs used on agricultural products

Recently published regulations in South Africa make provision for the registration of GIs that identify agricultural products as originating in South Africa or in a foreign country. Read more

1 Oct 2019

Trademark licensing in Africa: an A-Z whistle-stop tour

With Africa proving to be a particularly lucrative region for brands seeking licensing opportunities, we examine what rights holders need to know about trademark licences from a swathe of nations across the continent. Read more

Anti-Counterfeiting

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11 May 2018

Counterfeiting in Africa: part two of an A-Z guide

In part two of our A-Z guide to the anti-counterfeiting framework across Africa, we look at problems and solutions from Nigeria to Zambia. Read more

1 Jul 2017

Notorious markets: where to police

In the second of a two-part series, we profile markets which were omitted from the Office of the US Trade Representative’s Notorious Markets List, but which brand owners should have on their radars. This issue, we turn our attention to Asia and Africa

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4 Jul 2014

Call for IP community to keep up pressure over murdered customs officer

The myth that counterfeiting is a victimless crime was sharply dispelled in 2011 when South African customs official Johan Nortje was gunned down in front of his house, in what was described by police sources as a “hit”. This week it has been reported that the murder case has been withdrawn, and IP practitioners are being urged to keep the pressure on authorities.

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2 Feb 2011

Enforcement agencies tight-lipped over South Africa murder investigation

While South African authorities continue to investigate the murder of customs official Johan Nortje, INTERPOL and the World Customs Organisation have refused to comment on calls for a wider investigation into the crime.

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Brand management

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2 Jul 2014

Landmark or not, Twitter trademark decision welcomed by practitioners

The confirmation that Twitter will let complainants use common law trademark rights in its complaints form has been welcomed by trademark practioners.

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30 Jul 2012

Exchange Control Regulations amended in response to Oilwell decision

In response to the decision of the Supreme Court of Appeal in <i>Oilwell (Pty) Ltd v Protech International Limited</i>, the exchange control authorities have amended the Exchange Control Regulations to state that the term 'capital' includes an IP right. As a result, it is once again necessary for exchange control approval to be obtained when any intellectual property is assigned to an offshore entity.

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3 Jul 2012

Coca-Cola in a fizz after claims that SodaStream trashes its image

It has come to light that Coca-Cola in South Africa has sent a cease-and-desist letter to SodaStream, claiming that the latter had infringed its trademarks and was engaging in unfair competition. The action related to SodaStream’s use of discarded Coca-Cola containers in an outdoor marketing campaign intending to make a point about how environmentally friendly its own products are. The matter raises some interesting questions about exhaustion of rights, as well as best course of action when an offensive approach could have an adverse effect on brand perception.

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30 Jun 2011

Trademark portfolios must comply with new labelling regulations

The regulations governing the labelling of food have been modified to keep in line with international trends. The purpose of the amendments is to assist consumers in making informed choices about food. For example, under Regulation 13, food labels and advertisements may not contain words, pictures, marks or descriptions which create the impression that the food is endorsed by a health practitioner.

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Enforcement and Litigation

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22 May 2019

Beiersdorf v Koni: passing off and a composite of get-ups

In Beiersdorf AG v Koni Multinational Brands (Pty) Ltd, the South African High Court has considered the use by one party of a get-up that was a composite of various get-ups used by another party. Read more

27 Jul 2018

Mark owners beware: trademarks slipping through the cracks of loose corporate structures and corporate governance

Two recent decisions of the South African Supreme Court of Appeal highlight the dangers to trademark owners, from a proof of use perspective, in not setting up their corporate structures properly.

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21 May 2018

High Court: for purposes of passing off, one must compare "whole get-up" of products

In <em>Crabtree Electrical v Lesco Manufacturing</em>, South Africa’s High Court has found that there could be no passing off when one considered the "whole get-up" used by the parties when marketing their products.

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16 May 2018

Supreme Court of Appeal: "one cannot monopolise the commons of the English language"

The Supreme Court of Appeal found no likelihood of confusion between PEPPAMATES and PEPPADEW, highlighting the consequences of adopting a descriptive mark through the use of a phonetic equivalent.

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Government/Policy

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29 May 2018

South Africa a step closer to plain packaging tobacco products

In a move that brings South Africa a step closer to plain packaging for tobacco products, the Department of Health has invited public comment on the Draft Control of Tobacco Products and Electronic Delivery Systems Bill 2018.

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3 Jan 2018

Amendments to the ‘.za’ Alternative Dispute Resolution Regulations

The Department of Telecommunications and Postal Services has made significant amendments to the ‘.za’ Alternative Dispute Resolution Regulations, including a mandatory informal mediation service to be run by the ‘.za’ domain name authority.

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11 Jul 2017

South Africa’s recently tabled Copyright Amendment Bill 2017

Amending the Copyright Act has long been on South Africa’s legal reform agenda and now, through the collective effort of stakeholders, a new Copyright Act is within reach.

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4 Feb 2013

New regulations on infant food will remove existing trademark rights

South Africa has issued the Regulations Relating to Foodstuffs for Infants and Young Children, which place strict controls on the labelling of baby food products. Among other things, the regulations prohibit the use of any logos which incorporate pictures of infants or young children. Consequently, if a baby food manufacturer is the owner of a registered trademark which consists of the picture of a baby, it will no longer be able to use that mark on its products.

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Law Firms

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15 Aug 2016

Venturing into Africa: law firm opportunity and risk in an evolving IP landscape

For this week’s blog post from the <em>WTR 1000</em> research team, it is timely to consider the current state of trademark protection in Africa.

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Online

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9 Jun 2017

‘Drop-catching’ defence tested in South African domain name complaint

The practice of drop catching in the South African domain name space (‘.co.za’) was considered for the first time in a dispute concerning the domain name ‘darling.co.za’. The adjudicator ruled that the domain name registration abused the complainant’s rights. Where the domain name in dispute is identical to the complaint’s trademark, the onus is on the registrant to prove that the domain name is not abusive.

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23 Sep 2016

CLEARVU is again the subject matter of litigation proceedings

The trademark CLEARVU has again been the subject matter of litigation proceedings. After going head to head in South Africa’s Supreme Court of Appeal over CLEARVU as a Google Adword, M-Systems Group Ltd recently opposed Cochrane Steel Product Ltd’s application to register the trademark, arguing that CLEARVU was not capable of distinguishing.

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7 Jul 2016

Supreme Court of Appeal upholds ruling in Africa’s first AdWords case

South Africa’s Supreme Court of Appeal has upheld a High Court ruling that bidding on a competitor’s trademark as a keyword, without more, is not passing off.

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27 Jun 2016

Clarity on Google AdWords in South Africa

Google AdWords have been the subject of a number of disputes in various territories. The decision in <i>Cochrane Steel Products v M-Systems Group</i> has provided much-needed clarity regarding this advertising practice.

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Portfolio Management

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14 Feb 2018

Supreme Court of Appeal's CLEARVU decision: a clearer view of disclaimers and admissions?

In <em>Cochrane Steel v M-Systems</em>, which concerned the trademark CLEARVU, the Supreme Court of Appeal has considered the effect of disclaimers and admissions in South African trademark law.

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10 Oct 2017

A TWIST in the tale of landmark trademark dispute

South Africa’s Supreme Court of Appeal has handed down a landmark decision involving a trademark dispute between PepsiCo Inc and Atlantic Industries, a wholly-owned subsidiary of The Coca-Cola Company. 

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22 Jun 2017

OAPI adopts 11th edition of the Nice Classification

The Trademarks Registry of the African Intellectual Property Organisation (OAPI) announced recently that all new trademark applications which are filed at the OAPI Registry need to conform to the latest (11th) edition of the Nice Classification system on the registration of trademarks. OAPI has acceded to a number of international treaties aimed at creating a modern and dynamic framework and to harmonise administrative procedures in the registration of titles.

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19 Feb 2016

Court finds SAFIKA trademark infringed

In a recent decision a South African court pointed out that use of a mark as a company name does not amount to trademark use and is simply describing or identifying the name of the corporate vehicle through which it trades. This determination remains a question of fact in each case, taking into consideration consumer perception.

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Trademark law

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10 Nov 2017

Does the ASA have jurisdiction over non-members?

The recent Supreme Court of Appeal judgment in <i>The Advertising Standards Authority v Herbex (Pty) Ltd</i> has clarified the jurisdiction of the Advertising Standards Authority (ASA) of South Africa and confirmed that it may issue rulings regarding advertising by non-members. It is hoped that the ruling will enable the ASA to overcome any financial distress and continue to fulfil its regulatory function.

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10 Nov 2016

YUPPIECHEF fails to establish infringement

One of South Africa’s most successful and established online retailers, Yuppiechef, recently failed in the Supreme Court of Appeal to establish trademark infringement or passing off against a rival online retailer based on its trademark YUPPIECHEF.

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1 Nov 2016

The dominant feature test: not so Lucky after all

Recent decisions involving the application of established trademark principles in infringement and opposition proceedings in South Africa are proving a cause of some concern

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1 Nov 2016

Trademark and passing-off litigation in sub-Saharan Africa

The rise in numbers of trademark cases is good news for brand owners operating in sub-Saharan Africa and should help to develop a robust body of case law for this area

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