The irresistible force of freedom of speech meets the immovable object: trade mark law in South Africa

Legal context. The right of freedom of expression is a fundamentalright entrenched in the Bill of Rights incorporated in the SouthAfrican Constitution. While intellectual property rights donot enjoy this status, they are internationally recognised rightsgranted by a law of general application and may thus in termsof the Constitution limit the fundamental rights protected inthe Bill of Rights, and more particularly the right of freedomof expression. Where the enforcement of trade mark rights comes into conflictwith the right of freedom of expression, the two rights mustbe weighed up against one another and the competing interestsof the owner of the trade mark against the claim of expressionof a user without permission must be considered. The departurepoint of the weighing up process is that neither right is superiorto the other. Key points. This article discusses an action brought by SabmarkInternational, which claimed that Laugh It Off Promotions CCinfringed its registered trade mark BLACK LABEL in respect ofbeer by using a corruption of this mark with strong politicalundertones as ornamentation on T-shirts sold by it. It was claimedthat the offending use diluted Sabmark's registered trade mark.In an appeal, the Constitutional Court rejected the claim onthe basis that Sabmark had not shown that the offending usewas likely to cause economic damage to it. Practical significance. The case in effect equated trade markrights with rights enshrined in the Bill of Rights and thusgave important recognition to intellectual property rights.It created a precedent in intellectual property law, if notin South African law in general, in that the constitutionalcourt overruled a decision of the Supreme Court of Appeal (SCA)and in effect ruled that the SCA had not interpreted the relevantprovision of the Trade Marks Act correctly.     

Significant 2005 case law on the Community trade mark from the Court of First Instance, the European Court of Justice and OHIM

Legal context. Each year the ECJ and CFI gives numerous judgmentsin trade mark matters that are of interest to trade mark practitionersthroughout Europe. This article identifies the most importantcases decided in 2005 relating to the major issues in trademark law. Key points. Issues covered relating to procedural questionsinclude the language regime, the duty of Boards of Appeal togive reasons for their decisions, the right of a party to beheard, etc. Numerous substantive issues are covered, relatingto both absolute and relative grounds. The article also containssome helpful annexes that set out some actual comparisons ofsigns and of goods & services that have been carried outby the Luxembourg courts.     

Inter Partes Proceedings and the Reform of the Community Trade Mark Implementing Regulation

Legal and practical context. Commission Regulation 1041/2005of 29 June 2005, which amends the Community Trade Mark ImplementingRegulation, entered into force on 25 July 2005. Substantialamendments are brought to inter partes proceedings, that isoppositions and applications in revocation or in invalidity,and appeal procedures. Key points. The rules governing the substantiation of the earlierrights and time limits are now stricter. Also, the new regimeaims at circumscribing the consequences of the rather broadinterpretation which the Court of First Instance gave over thelast two years to the notion of functional continuity betweenthe opposition division and the Boards of Appeal. Practical significance. The authors analyse the new provisionscontained in the Community Trade Mark Implementing Regulationin the light of the latest case law of the Court of First Instance,in order to provide practitioners with a simplified guide.     

Strong trade marks and the likelihood of confusion in European law

Legal context. One of the fundamental assumptions of trade marklaw is that provision should be made to prevent the registrationor commercial exploitation of trade marks that are likely tobe confused with earlier marks. The justification for this assumptionis however unclear. Is it to protect the expectation of itsowner that a trade mark will provide a comfort zone, an areawithin which other traders simply may not enter? Is it to encourageinvestment in the development of a relationship between thetrade mark owner and his prospective customers by offering interference-freemarketing opportunities? Is it to protect the efficiency ofthe market by facilitating the making of decisions by consumersas to which product or process they wish to purchase? Or isit to protect the vulnerable consumer against the personal consequencesof his inattention or inability to discern the differences betweenproducts or services? Key points. This article examines the development of Europeanlaw relating to the protection of strong trade marks, thosewhich are highly distinctive or well known, against similarmarks that may or may not be likely to cause consumer confusion.It demonstrates the manner in which the European Court of Justiceseeks to address the likelihood of confusion in terms whichappear to draw more from legal abstractions than from marketrealities. After giving a favourable review of the controversialdecision of that court in the PICARO/PICASSO case, the articlelists further issues which European trade mark litigation hasso far failed to address. Practical significance. Armed with an understanding of the principlesemployed by the European Court of Justice, trade mark proprietorsin Europe will obtain a better appreciation of the strategiesto be used in either challenging competitors' marks in courtor adopting commercial measures to combat them.     

Domain Name DRS Policies: from the sublime to the ridiculous

Legal context. Cybersquatting emerged as a major problem fortrade mark owners in the latter part of the 1990s. Litigationhas proved a heavy and expensive method of resolving disputes.Over the past decade, various alternative dispute resolutionpolicies have been introduced, most notably the UDRP and mostrecently the .eu ADR Procedure. Key points. The article tracks the development of dispute resolutionand associated sunrise policies from the UDRP, via the NOMINETDRS Policy to the new .eu ADR Procedure. The UDRP was designedto assist nobody but trade mark owners. The NOMINET DRS Policyis wider and covers other rights owners without being specificas to the nature of the relevant rights. The .eu ADR Procedureon the other hand expressly extends to a wide variety of rightsranging from trade mark rights to rights in respect of familynames and condemns speculative as well as abusive registrations.The article draws attention to some of the shortcomings of the.eu ADR Procedure and laments the fact that the European Commission,which is responsible for the introduction of the .eu domain,did not consult more widely with a view to arriving at a sensibleworkable result. The author predicts a shambles both in relationto the .eu sunrise policy and the ADR procedure. Practical significance. The UDRP, the NOMINET DRS, and the .euADR Procedure all contain very similarly worded provisions,which help to conceal the significant differences between them.Practitioners formulating and/or responding to complaints underthese policies and procedures need to be aware of the differences.     

Mediation of Intellectual Property disputes

Legal and practical context. Mediation can bring real benefitsin avoiding protracted and costly IP litigation and is suitablefor most IP disputes except where a matter of principle, suchas construction of patent claims, requires resolution. Key points. Mediation may be used at any time to resolve a dispute.The courts can give robust encouragement by means of costs sanctionsand ADR orders but cannot compel the use of mediation. The Proceedsof Crime Act 2002 may apply to some mediated settlements, particularlythose involving trade mark and copyright infringement disputes. Practical significance. The courts and the Patent Office areactively seeking ways to encourage mediation of IP disputesand the Patent Office has announced the setting up of a mediationscheme.     

Disappointment for cigar enthusiasts: no implied consent to imports of Cuban cigars

In a recent decision judge Fysh QC, sitting as a High CourtJudge, ruled that a consignment of genuine cigars originatingfrom Cuba infringed UK and Community trade marks owned by aCuban company since there was neither express nor implied consentto their importation.     

One more outing for Arsenal: a case of dilution or one for restitution?

Legal context. This note, which comments on the preceding pieceby Susie Middlemiss and Steven Warner, deals with the implicationsfor the future development of passing-off of the dicta of AldousLJ in Arsenal v Reed, which are considered there. Key points. The article concludes that Aldous LJ was unlikelyto have been contemplating the introduction of a common lawdoctrine of trade mark dilution, or any other extension to passing-offwhich would remove misrepresentation from its central positionas one of the essential elements of the Classical Trinity, andthat the existing state of the authorities rules out any suchdevelopment by the Court of Appeal. Practical significance. It is tentatively suggested that anextension of existing passing-off principles to cases of pureunjust enrichment may have been what Aldous LJ had in mind,and that this would not necessarily be too radical a step forthe common law to accommodate.     

Conversion in the trade mark context

Legal context. The paper examines the formal requirements formaking a conversion application and provides an overview ofall the significant time limits which have to be observed. Key points. All relevant decisions taken by the Court of FirstInstance and the OHIM's Boards of Appeal are analysed by theauthors, particularly regarding the geographical scope and registrabilityof English language words. Consideration is also given to transformationand conversion under the Madrid Protocol and explanations areprovided regarding the five different types of conversion andtransformation in that context. As a special feature, the articledeals with conversion in the new Member States as well as inthe context of multiple oppositions. Practical significance. The article looks at conversion of Communitytrade mark applications and registrations into national trademarks from a practical and regulatory perspective. It explainsthe different considerations for requesting conversion froma commercial, legal and factual point of view and, in particular,the different grounds for requesting conversion.     

Pre-sale misrepresentations in passing off: an idea whose time has come or unfair competition by the back door?

Legal context. This article addresses the scope of the tortof passing off in English common law. Key points. The scope of passing off has traditionally beenlimited to confusion at the point of sale. Developments in marketpractice and trade mark law may argue in favour of extendingthat scope to cover both pre- and post-sale confusion. However,such an extension raises commonly voiced concerns about theintroduction of a general tort of unfair competition into Englishlaw. This article considers the specific issue of pre-sale confusionand concludes that there is both the need and the scope to bringit within reach of passing off. To do so would not amount tothe introduction of a general tort of unfair competition, butwould be entirely consistent with the rationale which has alwaysbeen the foundation for the tort. Practical significance. The conclusion advocated in this articlewould expand the range of conduct on which passing off claimscould be based and would increase the protection afforded tothe owners of famous brands.     

Navigating the rocky waters of trade mark law

Kerly's Law of Trade Marks and Trade Names, 14th Edition ByDavid Kitchin QC, David Llewelyn, James Mellor, Richard Meade,Tom Moody-Stuart, David Keeling; with Consultant Editor: TheRt. Hon Sir Robin Jacob; Sweet & Maxwell, 2005 Price: £255,Hardback, ISBN: 0421860804, pp. 1,350   Until recently, trade mark practitioners in the United Kingdomhad to make do with the 13th edition of Kerly, the 1st editionof The Modern Law of Trade Marks, or the CIPA/ITMA Handbookwhen navigating the rocky waters of trade mark law and practice.The first two of these texts     

The overlap between registered Community designs and Community trade marks

Legal context: Community trade marks and registered Communitydesigns have co-existed since April 2003. The relevant Europeanlegislation permits some subject matter to be registered undereither or both of these regimes. Key points In the absence of an express prohibition, it wasperhaps inevitable that the owners of distinctive designs wouldconsider registering them as trade marks and, conversely, thatthe owners of certain non-conventional trade marks might takeadvantage of opportunities for cheap and speedy registrationunder the designs system. The ability to obtain registered Communitydesigns and trade marks for the same subject matter is consideredhere. Practical significance A party seeking to protect the designof a distinctive product shape or its packaging may be ableto register it as a Community trade mark where it has missedthe boat for claiming novelty as a registered design, or wherea pre-existing design right is about to expire. On the otherhand, a distinctive and new logo or get-up which needs quickand cheap protection may benefit from being registered as aCommunity design. Neither the rights owners, nor those againstwhom they seek to assert their rights, should accept the validityof a registered Community design without question since thereis no substantive examination procedure. However, where valid,it can provide a powerful alternative to a trade mark and auseful additional weapon against unfair competition.     

Coexistence in Community trade mark disputes: conditions and implications

Legal context. A defence based on coexistence has no legal basisin the Trade Mark Directive or in the Community Trade Mark Regulation.Still, a practical approach to Community trade mark conflictsrequires attention to the situation in the marketplace whereconflicting marks may be shown to coexist without any currentconfusion or dilution being reported. Key points. Trade mark coexistence may sometimes be persuasive,the strict requirements being laid down by the Community courts.Through a detailed review of the case-law of the Community courtsand OHIM's Boards of Appeal, this article explains the conditionsfor and the consequences of proving the coexistence of the conflictingmarks in cases based on likelihood of confusion or dilution. Practical significance. Consideration must also be given tothe effects of third parties' neighbouring marks which may diminishan earlier mark's distinctive character. Accordingly, this articlefurther addresses the issue of whether the scope of protectionof a mark may be damaged by the use of later marks in the lightof the ECJ Judgment in the preliminary ruling Case C-145/05Levi Strauss v Casucci Spa.     

Demonstrating 'use' of an earlier registered mark in CTM opposition proceedings

An earlier registered trade mark may serve to oppose a laterapplication to register a Community trade mark, notwithstandingthat the earlier mark is not used in the form in which it isregistered, so long as the actual use had not destroyed thedistinctive character of the earlier mark.     

Whose trade mark rights? What the Microsoft case means for trade mark owners

Legal context. The article considers the influence of the commissionruling in the Microsoft case, forcing Microsoft to use its WINDOWS-trademark for an ‘unbundled’ version of the program inthe light of the trade mark owner's properties rights. The scopeof these rights is determined by the function of the trade markand the rights that the trade mark laws confer to the ownerin case of infringement. Key points. Trade marks are protected as property rights undercommunity law. They are the embodiment of past investments andtransform the reputation of the owner into a bankable asset.Consumers rely on trade mark owners' control over quality. Thisis mirrored by the rights of the trade mark owner to stop interferencewith quality and image, in particular in the context of resaleof altered products. Any interference that would be considereda trade mark infringement if committed by a private party shouldbe considered an interference with the protected property rightif caused by a government agency. This interference is not justifiedby the public interest because trade mark rights also embodyimportant public interests. Practical significance. If the analysis proposed in the articleis followed, intellectual property rights have to be given greaterweight in shaping antitrust remedies.     

Don't be a Martyr to Res Judicata

The High Court rules that a party who unsuccessfully opposesa trade mark application cannot later re-challenge the validityof the same trade mark by way of defence to an infringementclaim.     

Implementing Community obligations in the realms of intellectual property

Legal context. The various Acts of Parliament governing UK intellectualproperty law have been significantly amended to give effectto Community law. This article discusses the powers used bythe Secretary of State to implement Community obligations andthe Court of Appeal's recent clarification of the scope of thosepowers. Key points. This article describes the concerns expressed bysome commentators on the scope of the powers under the EuropeanCommunities Act 1972 and the key cases on that scope, includingOakley v Animal. The article uses the implementation of performers'moral rights as an example of where going beyond strict Communityobligations is necessary. Practical significance. The article will be useful to anyoneconsidering the validity of the changes made to domestic law,including amendments to primary legislation, to implement Directivesor other Community obligations.     

Qualification for design right: 'springing interests'

Legal context. An unregistered design can qualify for protectionunder the Copyright, Designs and Patents Act 1988 in a numberof ways. However, as the European Community expands the qualificationprovisions in the Act come into conflict with Community lawand the European Convention of Human Rights. This article setsout those issues and seeks a solution to them. Key points. This article begins by examining how a design qualifiesfor protection, by reason of the designer, the commissioneror the employer; or alternatively by reason of the person whofirst markets it. It then looks at the impact of new membersjoining the European Community and how this might create springinginterests in design right. It then tries to reconcile the rightin the EC Treaty not to be discriminated against on the groundsof nationality with the right to quiet enjoyment of propertyunder the ECHR. Practical significance. This article considers the ownershipof design right and springing interests. It will therefore beof interest to anyone who owns a design right by reason of thedesign being first marketed in the United Kingdom.     

Trade mark use in transit: EU-phony or cacophony?

Legal context The present article discusses the opinion of Advocate-GeneralJacobs in Case C-405/05 Class International BV v Unilever NVand others, according to which trade mark owners cannot opposethe entry into the European Union of grey market non-Communitygoods placed in external transit, on the grounds of Article5(1) of the Trade Mark Directive, or any equivalent provision,as such entry does not constitute trade mark use. Key points We examine the consistency of this approach withprior case law of the European Court of Justice, namely in theCommission v France, Rioglass, The Polo/Lauren and Rolex casesand draw a parallelism with Council Regulation (EC) 1383/2003. Practical significance We conclude that trade mark owners shouldbe allowed to prohibit the placing in transit of goods whichwould infringe an intellectual property right under the lawof the transit country, unless the owner or consignor of thelitigious goods can undeniably prove that the goods are notdestined for the internal market. Stop press. At the end of the article the authors provide abrief analysis of the European Court of Justice's decision of18th October 2005 in this case.