Region: South Africa

Over the past year there has been a regular stream of cases in Africa – with the number of decisions set to increase in the coming years

29 April 2016

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.

19 February 2016

An Anton Piller order is a powerful tool within the arsenal of IP litigants, but one that is by nature open to abuse. A recent Supreme Court of Appeal decision outlined the level of specificity with which the plaintiff must describe the evidence sought when applying for such an order.

03 February 2016

In <I>Fairhaven Country Estate (Pty) Ltd v Harris</I>, the High Court has applied the common law principles of passing off to a domain name registration. Among other things, the court held that a domain name can qualify for the common law delict of passing off where the applicant does not own the relevant trademark.

29 July 2015

In <I>Etraction v Tyrecor</I>, the Supreme Court of Appeal has examined the issues of vested rights, use in relation to registered goods and use in good faith. Among other things, the court found that Tyrecor had vested rights in the trademark INFINITY in relation to tires, and allowed Tyrecor’s counterclaim for the partial expungement of Etraction’s INFINITY mark.

03 July 2015

Featured in Anti-counterfeiting 2015 – A Global Guide

The Counterfeit Goods Act (37/1997) is specifically designed to combat the trade in counterfeit goods in South Africa and has its genesis in the Agreement on Trade-Related Aspects of IP Rights (TRIPs). The Counterfeit Goods Act was enacted to bring South African law into compliance with TRIPs.

08 May 2015

The South African Trademarks Act (194/1993) provides for the registration of trademarks, certification trademarks and collective trademarks.

13 February 2015

In <I>Roodezandt Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd</I>, the Supreme Court of Appeal has held that the parties’ respective ROBERTSON marks for wine were confusingly similar. Among other things, the court explained the norm of trademark use as it relates to wine, stating that the mark on the product identifies and guarantees the origin of the finished product, while a separate label usually indicates the geographical origin of the grapes.

11 December 2014

In <I>Nestlé v Iffco</I>, the Supreme Court of Appeal has granted Nestlé an interdict against Iffco for infringing its four-finger and two-finger wafer shape trademark registrations. Among other things, the court agreed with Nestlé that, as Iffco’s sales rose, consumers would associate Nestlé’s wafer shape marks with Iffco, and that the loss of the unique shape of the Kit Kat bar as a distinctive attribute would lead to loss of advertising or selling power for Nestlé.

09 December 2014

In <I>Cochrane Steel Products v M-Systems Group</I>, the Gauteng High Court has brought much-needed clarity to the legal position surrounding the practice of bidding on competitors’ trademarks as keywords. The decision indicates that advertisers wishing to bid on competitor’s trademarks may do so, provided that the advertisements are clear and not confusing, or otherwise do not take unfair advantage of the advertising value of a registered trademark.

04 November 2014