Region: South Africa

ESCALATOR FUNDS decision shows how owners of 'limping' marks can protect them

In <I>Discovery Holdings Limited v Sanlam Limited</I>, the Western Cape High Court has considered the position of ‘limping’ trademarks – that is, marks that are never used by themselves as they are weakly distinctive and gain support from the ‘crutch’ of another mark. The decision shows that it is important to use weak marks independently from the house mark to allow the public to recognise them.

11 September 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 This week it has been reported that the murder case has been withdrawn, and IP practitioners are being urged to keep the pressure on authorities.

04 July 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.

02 July 2014

Applicant for interdict held to have no bona fide claim to proprietorship of mark

In <I>Etraction (Pty) Limited v Tyrecor (Pty) Limited</I>, the Western Cape High Court has held that the respondent had common law rights in the INFINITY mark which predated the use and registration of the applicant’s rights and, accordingly, had a defence to the claim of trademark infringement. The court also found that the applicant did not have a <i>bona fide</i> claim to proprietorship of the mark and granted the respondent’s claim for partial cancellation.

03 June 2014

Investment company ordered to change name under Companies Act

In <I>Massachusetts Financial Services v MFS Investments (Pty) Limited</I>, the Companies Tribunal has found that the name MFS Investments (Pty) Limited offended against Sections 11(2)(b) and 11(2)(c) of the Companies Act. Among other things, the tribunal held that the name was confusingly similar to the registered trademarks of Massachusetts Financial Services.

01 May 2014

Trademark removed from register due to owner's "unethical" behaviour

In <I>Reynolds Presto Products Inc v PRS Mediterranean Limited</I>, the High Court has ordered that the trademark GEOWEB be removed from the Register of Trademarks under Section 24(1) of the Trademarks Act. Among other things, the court held that bad faith in relation to claims to proprietorship and trademark registration need not necessarily involve a breach of a legal obligation; it is sufficient that the court is of the view that the conduct is unethical.

15 April 2014

Supreme Court of Appeal: no passing off in STAR case

In <I>Pioneer Foods v Bothaville Milling</I>, the Supreme Court of Appeal has held that Pioneer Foods had failed to prove that Bothaville Milling was passing off its STAR super maize meal as Pioneer’s WHITE STAR super maize meal by selling it in a get-up deceptively or confusingly similar to that of Pioneer’s product. The court stated that, in assessing the likelihood of confusion, account should be taken of the value of the goods in question and the class of customers who buy the goods.

02 April 2014

Supreme Court of Appeal decision in ZONQUASDRIFT case: a worry for brand owners

A wine brand owner has been unable to enforce his trademark registration against use of a confusingly similar mark for wine grapes in a case that went on appeal to the Supreme Court of Appeal. The court’s decision in <i>Mettenheimer v Zonquasdrif Vineyards CC</i> is a worry not only for wineries, but also for brand owners in general.

06 January 2014

Nestlé fails to prevent use of 'break' marks for chocolate-coated wafer finger products

In <i>Société des Produits Nestlé SA v International Foodstuffs Co</i>, the North Gauteng High Court has found that Iffco, the owner of the word marks QUANTA BREAK and TIFFANY BREAK for chocolate-coated wafer finger products, did not infringe Nestlé’s ‘finger wafer' and HAVE A BREAK marks. The court also refused to expunge Iffco’s marks and rejected Iffco’s counter-application for expungement of Nestlé’s 'finger wafer' marks.

13 December 2013

SCA decision to have significant implications for car and spare part manufacturers

In <i>Bayerische Motoren Werker Aktiengesellschaft v Grandmark International (Pty) Ltd</i>, the Supreme Court of Appeal has dismissed an appeal against a ruling of the North Gauteng High Court which had caused quite a buzz amongst motor manufacturers and spare part suppliers alike. The lower court had held that it was not possible to file aesthetic design applications for articles in the nature of spare parts for motor vehicles.

03 October 2013

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