South Africa

South African police attacked during counterfeit raid, Chile IP office new director, and Airbnb versus Hairbnb: news digest

In our latest edition, we look at the 2 millionth trademark application at the EUIPO, a new report finding that UK students are "actively disloyal" to brands, a collection of fake video games released, and much more.

South African police attacked during counterfeit raid, Chile IP office new director, and Airbnb versus Hairbnb: news digest
5 Apr 2019

How South Africa’s predicted economic upswing will create opportunities for brands and their advisors

The country is seeing increased interest from international entities - particularly from the US; this will likely grow in scale as not only the South African economy develops, but as other emerging markets on the African continent grow. 

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14 May 2019

Procedures and strategies for anti-counterfeiting: South Africa

The Counterfeit Goods Act 37/1997 aims specifically to combat the trade in counterfeit goods. The act was implemented in conjunction with amendments to the Merchandise Marks Act 17/1941, which had hitherto been the principal weapon used to deal with counterfeit goods. Read more

4 Dec 2018

The (copy)cat has been let out of the bag

Primark judgment provides guidelines and clarity for owners of well-known international trademarks after Truworths succeeded in cancelling the PRIMARK trademark on the grounds that it was neither in use nor well known to the relevant sector of the South African public. Read more

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Anti-counterfeiting

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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 Read more

Enforcement and litigation

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14 May 2019

Procedures and strategies for anti-counterfeiting: South Africa

The Counterfeit Goods Act 37/1997 aims specifically to combat the trade in counterfeit goods. The act was implemented in conjunction with amendments to the Merchandise Marks Act 17/1941, which had hitherto been the principal weapon used to deal with counterfeit goods. 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. Read more

21 May 2018

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

In Crabtree Electrical v Lesco Manufacturing, 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. Read more

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. Read more

Goverment/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. Read more

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. Read more

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. Read more

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. Read more

Portfolio management

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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.  Read more

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. Read more

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. Read more

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. Read more

Trademark law

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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. Read more

21 May 2018

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

In Crabtree Electrical v Lesco Manufacturing, 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. Read more

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. Read more

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

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