Region: South Africa

WILD FLOWERS smell of descriptiveness, court rules

The High Court of South Africa has cancelled the registration of the mark WILD FLOWERS for air fresheners on the grounds that it was descriptive. The mark's original entry on the register could not be attacked as it was protected under Section 42 of the Trademarks Act 1963, which provided that marks registered in Part A of the register were deemed valid after seven years. However, the mark was found to have remained wrongly on the register.

31 May 2005

Sweet victory for Master Foods in packaging row

In <i>Master Foods (Pty) Ltd v Tiger Brands (Pty) Ltd</i>, the Advertising Standards Authority has held that the packaging of the respondent's range of sweets called Indulgent Sparkles was an imitation of the complainant's packaging for its Streamers range of confectionery and exploited the goodwill of the Streamers product.

13 April 2005

'Black Labour' user hopes to get last laugh in tarnishment appeal

Laugh It Off Promotions CC has applied for leave to appeal in the Constitutional Court against the Supreme Court of Appeal's ruling that Laugh It Off's use of the phrase 'Black Labour' on T-shirts diluted South African Breweries International (Finance) BV's BLACK LABEL trademark. The issue before the Constitutional Court will require it to balance the right to freedom of expression and the right to protect a trademark.

29 March 2005

Mandela banks victory in gold coin dispute

In <i>Mandela v Investgold CC</i>, the Transvaal Provincial Division of the High Court has upheld former South African president Nelson Mandela's application to restrain the defendant from importing into South Africa gold coins bearing his name and famous profile. It held that Mandela's refusal to give consent to the importation was reasonable pursuant to a commercial agreement between the parties.

02 March 2005

BMW Case steers court towards clarification of Section 34 defence

In <i>Bayerische Motoren Werke AG v BW Tech</i>, the Transvaal Provincial Division of the High Court has outlined the scope of the defence set out in Section 34(2)(c) of the South African Trademarks Act, which affords protection to parties who make a <i>bona fide</i> use of a registered trademark to describe their goods or services.

17 January 2005

Grünberger wine loses its bottle in shape mark battle

In <i>Die Bergkelder Beperk v Shoprite-Checkers Ltd</i>, the Cape High Court has ordered the expungement of the plaintiff's container mark, the Grünberger bottle, on the grounds that it was not distinctive at the time of registration. This is an interesting conclusion as the court had conceded that the statutes in force at the time the mark was registered required it to accept that the mark was distinctive at the date of registration.

10 December 2004

Mickey Mouse and friends lose bid for freedom in Lion King Case

The High Court of South Africa has rejected an application by Disney Enterprises to free 240 trademarks and the copyright in <i>The Lion King</i> from attachment to a copyright infringement claim against the company. The trademarks, which include MICKEY MOUSE and DONALD DUCK, will now remain attached until the final resolution of the case.

26 October 2004

Formal application for rectification required, confirms court

In <i>Colgate-Palmolive Company v SmithKline Beecham plc</i>, the High Court has confirmed that where the registrar of trademarks erroneously issues a certificate of registration for a trademark in respect of which the opposition period is still open, interested parties should formally apply to correct the error on the register pursuant to Section 24(1) of the South African Trademarks Act.

11 October 2004

Registrar bars Cadbury’s purple colour mark

In <em>Cadbury Limited v Beacon Sweets and Chocolates (Pty) Ltd</em>, the registrar of trademarks has refused to register a specific shade of purple as a trademark. The registrar held that the mark, in the form in which it was represented in the application, was not capable of distinguishing chocolate confectionary pursuant to Sections 9 and 10(2)(a) of the South African Trademarks Act.

08 July 2004

Well-known trademark defence in cancellation proceedings rejected

In <i>Kwality Biscuits (Pty) Limited v National Brands Limited</i>, the Transvaal Provincial Division of the High Court of South Africa has ruled that where the owner of a mark that is subject to a non-use cancellation proceeding is South African, it cannot claim that its mark is protected as a well-known mark under the Paris Convention. The court held that the well-known mark defence only applies to foreign mark owners.

21 June 2004

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