Region: South Africa

Discerning whiskey imbibers not likely to be confused

In <i>Distell Ltd v KZN Wines and Spirits CC</i>, the High Court has decided a passing-off and trademark infringement dispute over labels applied to whiskey. Among other things, the court found that confusion was unlikely to occur between the mark BLACK KNIGHT on the one hand, and the marks KNIGHT’S GOLD and KNIGHTS on the other.

25 June 2013

Confusion of one or two individuals may be sufficient to establish confusion by average consumer

In <i>Swartkops Sea Salt (Pty) Ltd v Cerebos Limited</i>, Swartkops Sea Salt (Pty) Ltd has received a judgment interdicting Cerebos Limited from passing off its braai salt as that of Swartkops. Interestingly, the court held that the evidence of the two consumers who had experienced confusion with the competing product, on the basis of its get-up, was sufficient to establish confusion on the part of an average consumer.

05 June 2013

Exploitation without imitation - protecting your goodwill through the ASA

The recent <i>Multix Cling Wrap/Glad Wrap</i> matter has shown that a well-constructed complaint to the Advertising Standards Authority can provide a relatively efficient and inexpensive mechanism through which proprietors can enforce their IP rights. The ASA’s provisions on the exploitation of advertising goodwill can also pose a danger to foreign products entering the South African market for the first time.

15 May 2013

adidas prevails in four-stripe case against local retailer

In <i>adidas AG v Pepkor Retail Limited</i>, the Supreme Court of Appeal has overturned a decision in favour of Pepkor Retail Limited, which had succeeded in defending infringement and passing-off claims by adidas in respect of its famous three-stripe device and related footwear get-up. The court held that the more distinctive a trademark, the more likely confusion will occur when the mark is used on competing products.

27 March 2013

Decision raises bar for proving similarity between goods and/or services

The North Gauteng High Court has dismissed an appeal by the Foschini Group – the owner of the word mark DUE SOUTH in various classes – to overturn a decision by the registrar of trademarks to accept applications for registration of the mark DUE-SOUTH (and device) in Classes 16, 29, 30 and 41 on the basis that the goods/services covered by the marks were not similar.

27 February 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.

04 February 2013

Supreme Court of Appeal issues far-reaching decision on trademark use

In <i>The Gap Inc v Salt of the Earth Creations (Pty) Ltd,</i> the Supreme Court of Appeal has considered whether evidence of negotiations taking place in New York, coupled with use on a single email and an order form (which may not have been seen in South Africa) amounted to proof of <i>bona fide</i> trademark use for purposes of Section 27 of the Trademarks Act.

19 September 2012

Design decision sparks debate in automotive world

In <i>Bayerische Motoren Werke AG v Grandmark International</i>, the Gauteng North High Court has held that a motor vehicle part such as a bonnet is a purely functional article and, as such, cannot be filed as an aesthetic design. BMW AG had sued a spare parts manufacturer, Grandmark International, for alleged infringement of its registered designs. The judgment has a profound impact on original motor manufacturers and replacement part manufacturers alike.

11 September 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.

30 July 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.

03 July 2012

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