Pandora Opens The Truworths Box

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THE LEGEND OF PANDORA’S BOX

Legend has it that the first woman, Pandora, was sent as a curse to Zeus’ men and was given a present upon her marriage. The present was a box that she was told never to open. Needless to say her curiosity got the better of her and she unleashed 8 demons into the world. The first 7 being the 7 deadly sins, and the last, which she managed to capture, was hope.

Recently, Pandora opened the Truworths box and they got themselves into a situation over which they had very little control.

BACKGROUND TO THE MATTER

Upmarket jewellery outlet Pandora who describes themselves as “purveyors of the finest collection of silver and gold jewellery ideal for your special moment” recently went head to head with clothing store Truworths Limited in the High Court in respect of the ESSENCE trade mark.

Truworths is the registered proprietor of the ESSENCE trade mark within South Africa but Pandora filed an application to cancel the ESSENCE trade mark from the trade marks register for non-use thereof by Truworths Limited. According to Truworths it has been the proprietor of the ESSENCE trade mark for the last 23 years. Pandora, however, alleged that ESSENCE was no longer being used by Truworths Limited in respect of the goods for which registration was obtained, i.e. jewellery.

LEGAL REQUIREMENTS

Under the South African Trade Marks Act 1993 “a registered trade mark may, on application, to the Registrar by any interested person, be removed from the register in respect of any of goods or services in respect of which it is registered, on the ground that at a date three months before the date of the application, a continuous period of five years or longer has elapsed from the date of issue of the Certificate of Registration during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by the proprietor.”

Therefore, two criteria have to be met:

  1. there has to be a continuous period of five years or longer of use since the date of the issue of the Registration Certificate of a registered mark; and
  2. that there was no bona fide (genuine) use of the trade mark in relation to the goods in respect of which the registration was sought.

ARGUMENT IN COURT

Arguments for the removal of the ESSENCE trade mark centered around Pandora asserting that there was no use by Truworths of the trade mark ESSENCE in relation to the goods i.e. the jewellery in respect of which the registration was held. In terms of the Trade Marks Act “the application against the proprietor against whom it is being alleged is not using the trade mark has the onus to prove that they are still making use of that trade mark.” In this instance Truworths then had to prove that, at the date three months before the litigation started, it had been using its ESSENCE trade mark for a period of at least five years since the date of issue of its Registration Certificate and such use was bona fide.

In supplying proof, Truworths stated that the ESSENCE range fell under its formal range of clothing and could be found in selected stores and that it had been using the mark for twenty three years in respect of many of its garments which were clothing with a jewellery type appearance. The jewellery was attached to some of the clothing and could be detached and worn separately. The court was shown a white shirt with a detachable necklace and a stock sheet was presented showing that it had recently sold 305 of those garments. Pandora’s counsel argued that Truworths had not demonstrated that it had used the trade mark in relation to any commercially recognized category and that it was not used in respect of jewellery for which the registration was obtained. On the other hand Truworths indicated that while it did not use the trade mark exclusively for jewellery it was using it in relation to its clothing because the jewellery formed part of the garments.

JUDGMENT

The judge ruled in favour of Truworths indicating that jewellery was covered by the trade mark registration held by Truworths and the clothing chain was still using it and therefore the application for cancellation of the mark ESSENCE from the trade marks register was denied.

COMMENTS

It seems that when Pandora opened the box it had no control over the contents from the spill out from Truworths. However, it appears that the definition of clothing which falls into Class 25 has been stretched to include and encompass goods being offered in the jewellery class which falls into Class 14. Can it be said that jewellery and clothing are synonymous? Can clothing look like jewellery? Can 305 sales equate to continuous use for a period of five years? It is believed that these are questions that could have been explored more in depth by the court in its assessment of the facts before it.

CONCLUSION

However, what is evident is that it is essential for a trade mark owner to make use of its trade mark on an ongoing and consistent manner. Token use will not be sufficient and as a result one could then be fighting the opening of one’s own Pandora’s Box in defending an application for the cancellation of one’s registration.

Kim Rademeyer – Partner
kim@rademeyer.co.za

Copyright Amendment Bill 2015

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The Copyright Amendment Bill 2015, which aims to amend the Copyright Act 98 of 1978, has been published by the Department of Trade and Industry (DTI) for public comment. The DTI says the current policy revision is based on the need to bring the copyright legislation into line with the digital era and developments at a multilateral level.

Jeff Radebe, the Minister in the Presidency responsible for Performance Monitoring and Evaluation, who announced the approval of the publication of the Bill, stated that “The Bill addresses the licensing of copyright work and material in relation to commissioned work to prevent commercial exploitation”  and that the Bill “will help government to address the plight of musicians and performers by ensuring that royalties are paid on time by recording companies and broadcasters as most of them are dying as paupers.” However, while this sounds good in theory, a reading of the Bill exposes many errors, inconsistencies and far-reaching problems that are causing an uproar amongst industry experts.

Some of the more noteworthy proposed amendments are the introduction of a new class of works that will be eligible for copyright, namely “craft works”, such as pottery, jewellery and folk-art, a re-sale royalty right for artistic works, a “fair use” exception, which may only be used in limited circumstances, the management of digital rights and the introduction of a provision that purports to stop brand holders from restraining parallel imports through copyright infringement proceedings.

In principle, the Bill is a step in the right direction. There are some positive proposals such as provision for disabled people in that any translated or amendment of protected works for their purposes will not be considered copyright infringement, and the introduction of collecting societies for artists or owners of copyright.

However, the problems with the Bill far outweigh these positive developments. It has been submitted by industry experts that the Bill is badly drafted and difficult to understand. Further, it appears that basic principles of copyright law (and some other laws) and even the Constitution have been disregarded.

Some proposed provisions of the Bill are just absurd, such as the introduction of a provision that all copyright assignments shall be valid for only 25 years and the criminalisation of minor transgressions such as non-payment of a re-sale royalty to the original creator of a work, who may well be unknown to the purchaser at the time of the sale.

Possibly one of the most significant changes the Bill proposes is that the ownership held by individuals will automatically transfer to the state on their death. Not only is this provision unprecedented, the Bill does not indicate how this transfer will be administered. Surely depriving a person or their heirs of the benefits of a work is unconstitutional? Strangely, another part of the Bill prohibits the state from assigning copyright to anyone else – so the copyright can never be sold or exploited once it is transferred to the state.

It has been suggested that the Bill should be completely re-drafted – Professor Owen Dean, chair of intellectual property law at Stellenbosch University, believes that the Bill “displays a lamentable lack of knowledge and understanding of the basic principles of copyright law. While it has some good aspects, it is fundamentally so flawed that the DTI should go back to the drawing board and start afresh by using a drafting committee that has expertise in copyright law”.

Professor Dean warns that “if this Bill becomes law and the Copyright Act is amended accordingly, it will do inestimable harm, to our copyright law and will cause it to plunge into a freefall leading to decline”.

The public were given until 26 August 2015 to comment on the Bill. It is believed that a recent meeting facilitated by the South African Institute of Intellectual Property (SAIIPL) allowed for intellectual property practitioners in the Gauteng area to ventilate their concerns and discuss the far reaching and controversial implications of the Bill. We now await the passage of the Bill through Parliament but it may be a few years before we know whether the Bill will become law. Who knows, it may be referred to the Constitutional Court or even completely re-drafted. All we can do now is watch this space…

Kim Rademeyer – Partner
kim@rademeyer.co.za

Monty Rademeyer – Partner
monty@rademeyer.co.za

Sources:

  1. “HOT OFF THE PRESS: SA Copyright Amendment Bill published for comment” http://afro-ip.blogspot.com/
  2. “Copyright Amendment Bill approved by SA Cabinet” http://mybroadband.co.za/news/government/130406-copyright-amendment-bill-approved-by-sa-cabinet.html
  3. “Copyright Amendment Bill boggles legal minds” moneyweb.co.za
  4. “Converting Copyright into Copywrong” by Professor Owen Dean, published in Vol 2 Issue 2 of the SAIIPL newsletter, August 2015

Despicable Colours

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Minions – the mumbling yellow creatures that first appeared in the “Despicable Me” franchise, have become a phenomenon of their own, even earning them a starring role in the Universal Studios spin off film “Minions”. The films have been widely successful and Universal Studios has been careful to ensure that its success is secured as both Despicable Me and Minions are protected by way of trade marks and copyright. The trade marks cover a variety of products – ensuring that every piece of merchandise possible is protected.

Riding the wave of success these movies have brought, Universal Pictures and Illumination Entertainment have now joined forces with the Pantone Colour Institute (which define and standardise colours for use in industry world-wide), in the production of the very first character inspired colour – Minion Yellow.

According to Pantone, Minion Yellow “heightens awareness and creates clarity, lighting the way to intelligence, originality and the resourcefulness of an open mind – this is the colour of hope, joy and optimism”. This distinctive yellow colour can now be bottled up and used in your home as Minion Yellow is available in Pantone’s home and interior palate, so you too can experience the joy and optimism that this colour was developed to impart.

It remains to be seen whether Minion Yellow will be trade marked, to add to the arsenal of intellectual property protecting Universal Studio’s widely successful franchise. If Universal Studios does decide to trade mark Minion Yellow, it may not be all smooth sailing and like the plans of the despicable masters these Minions seek to serve, there may be a few obstacles along the way.

A particular shade of colour, often identified by the allocated Pantone number, can function as a trade mark provided that it uniquely identifies or distinguishes the origin of the particular goods or services to which the colour is applied. This does not however mean that a colour (in isolation) can be owned, as trade marking a colour simply gives the company or individual the right to use the colour in respect of those particular goods or services. Examples of successful Pantone trade marks include Coke Red (Pantone 484) as well a specific turquoise colour used by Heinz for its Baked Beans. The emerald green (Pantone 3298C) used by Starbucks (who is said to opening its first African store in Johannesburg next year) is also trade marked. Christian Louboutin was also successful in registering a trade mark for the unique red soles of the famous shoes.

However not all colour trade marks have been successful. In a long waged battle against Cadbury in the UK, Nestlè was successful in its opposition of Cadbury’s trade mark for Pantone 2685C, being the distinctive purple colour used on its chocolate packaging for more than 100 years. In Australia, the authorities recently upheld Woolworths’ objections to BP’s trade mark application for Pantone 348C, being the green used in much of its branding.

It will be interesting to see, given the relatively recent decisions rejecting colour trade marks, whether Minion Yellow would be allowed as a trade mark, thereby paving the way for the rise of character inspired colours. Perhaps “Shrek green” will be coming to a paint store near you.

Hillary Brennan – Practitioner
hillary@mrf.co.za

Monty Rademeyer – Partner
monty@mrf.co.za

To Copyright Or Copyleft? That Is The Question!

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The two most common types of licences are “copyleft licences” and “permissive free software licences”.

Copyleft licences require that information necessary for reproducing and modifying the software must be made available to recipients of the “executable” (geek terminology).  The source code files usually contain a copy of the licence terms and an acknowledgment of the author.  In terms of copyleft the author surrenders some of its rights under copyright law.  Instead of allowing the software to fall completely into the public domain, copyleft allows an author to impose some restrictions on those who want to engage in activities usually reserved by the copyright holder.  Under copyleft, derived works (eg. variations or developments of the registered software) may be produced provided the derived works are released under a compatible copyleft scheme.  The underlying principle is that a person can benefit freely from the work of others, but any modification, variation or modification of the original software made by the person must be released under compatible terms.

The goal of copyleft is to give all users of the software the freedom to copy, distribute and modify (adapt) without restriction.  Copyleft licences are distinct from other types of free software licences which do not guarantee that all “downstream” recipients of a program receive these rights, or the source code which is needed to make these rights effective.
A permissive free software licence is a class of free software licence with minimal requirements about how the software should be redistributed.  A permissive free software licence allows a redistributor to remove or restrict the right to copy, distribute or modify and does not necessarily require the free distribution of a source code.  Thus this type of licence makes no guarantee that future generations or versions of the software will remain free.

It is apparent that it is possible for a permissive free software licence to include a provision that makes it incompatible with a copyleft licence.  For example a permissive free software licence could include a clause requiring advertising materials to the credit of the copyright holder.

When an author contributes code to an open-source project the resulting software may be an explicit licence (eg. the contributor’s licence agreement) or an implicit licence (eg. the open source licence).  Some open-source projects do not take contributed code under a licence, but actually require (joint) assignment of the author’s copyright in order to accept code contributions into the project (eg. OpenOffice.org and its Joint Copyright Assignment Agreement).

It is difficult to understand the legal implications of the differences between licences.  With more than 180,000 open-source projects available and its more than 1400 unique licences, the complexities of deciding how to manage open-source usage within “closed source” commercial enterprises have dramatically increased.

Open-source licences are not necessarily compatible, making it legally impossible to mix (or link) open-source codes under different licences.

Licence compatibility is an issue that arises when licences applied to software packages contain contradictory requirements, rendering it impossible to combine source code or content from such works in order to create new ones.

Commercialisation of derived software incorporating FOSS may not be straightforward.  The primary business model for closed-source software involves the use of constraints on the use of proprietary software and the restriction of access to the original source code, requiring the user to purchase the right to use the software.  To this end, the source code to closed-source software is considered a trade secret by its manufacturers.

FOSS methods, on the other hand, typically do not limit the use of software in this fashion.  Instead, the revenue model is based mainly on support services.  The source code of the software is usually given away and can be freely modified.  There may be some licence-based restrictions on re-distributing the software.  Generally, software can be modified and re-distributed for free, as long as credit is given to the original manufacturer of the software.  FOSS based software can generally be sold commercially, as long as the source-code is provided.  There are a wide variety of free software licences that define how a program can be used, modified, and sold commercially (see GPL, LGPL, and BSD-type licences).

MRF on Ontbytsake

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MRF is very proud of its offices in Ferndale, Randburg. If you are interested to see what our offices and boardroom look like, take a peek at this video that was developed for television advertisement. Better yet, schedule an appointment to take advantage of our 30 minute free consultation offer so that you can see our beautiful surroundings for yourself and we may meet you in person.

From Jo’burg, with Love

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Cover Marie Claire July 2015.pdfMRF is very proud to be the trade mark practitioners for the LOVE JOZI brand. LOVE JOZI has gone from strength to strength over the 10 years that it has been in existence, as is evident from the double page spread in the July 2015 Marie Claire magazine. Congratulations to Bradley Kirshenbaum and his team on a wonderful achievement!

Read the entire article by clicking here.

Special thanks to Associated Media Publishing for permission to use the article.

Mommy, Please buckle me up!

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How often has one heard this refrain from one’s own child? Not often, we can bet. However given the amendments to the National Road Traffic Act 93 of 1996 effective 1 May 2015, buckling up is now compulsory for children under the age of 3 years.

Every day, nearly 40 people die on South African roads, and 3 to 4 of these deaths are children. South Africa has the third highest road death toll in the world, following the Cook Islands and Libya respectively.

Use of seatbelts for children in foreign countries

Prior to 1 May 2015 in South Africa, there was no penalty for a parent who travelled in a car without ensuring that their 3 year old or younger passenger was strapped safely into a car seat designed for such purpose. This placed South Africa in the same ranking as China, India, Kenya, Indonesia, Madagascar, Malaysia and Mauritius who also have no legislation for compulsory seat belts for children in vehicles. Monaco is one of the few countries that does not enforce compulsory seat belt use and has no legislation for children to be restrained within a vehicle.

However, in South Africa, as from 1 May 2015, parents who do not strap their under the age of 3 year old child into a car seat will be issued with a traffic fine. We are certain that the law applies not only to parents but to any driver transporting a child under the age of three.

Risks of non- use of a seatbelt

Failure to use a seatbelt is a major risk factor for road traffic injury and deaths among vehicle occupants. When a motor vehicle crash occurs, a car occupant without a seat belt will continue to move forward at the same speed at which the vehicle was travelling before the collision and will be catapulted into the front of the vehicle. More than half of all countries have implemented a child restraint law, but these represent just 32% of the world’s population.

Response to the new rules

Unlike seatbelts, child restraints are not automatically installed in vehicles and must be purchased and fitted by parents. This makes it more challenging to achieve higher usage rates, especially in low and middle income countries. There are those who have indicated that generally speaking they are happy to use the child restraints however their children do not like being restrained in a car seat and cry uncontrollably until they reach their destination. Some have indicated that a child car seat is an expense which they are just unable to afford.

Appropriate child restraint use may be limited by access and cost or be impractical because of large family size. In addition, parents must make a number of decisions about what type of child restraint to choose, where to place it and how to install it which can also limit uptake. However, the argument against this type of defence is that the value of one’s child is greater than the expense of a proper car seat for one’s child.

Conclusion

It is evident that more countries need to adopt child restraint laws. This regulation is a welcome one in South Africa which we hope all parents, and motorists transporting young children, will follow.

Kim Rademeyer – Partner
kim@rademeyer.co.za

Hit Me Baby, One More Time

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It may have been premature to dub the Mayweather–Pacquiao bout on 2 May 2015 the ‘Fight of the Century’, when we had only seen slightly more than fourteen percent of the century and zero percent of the fight; and given the scandal of Pacquiao’s rotator-cuff injury, it seems as though the pundits were definitely wrong. At least the 20th century waited 74 years before declaring its best boxing match.

Nevertheless, it seems that Pacquiao’s fight is far from over. No less than thirty-two class-action lawsuits have been filed against him, his promoters, Top Rank, and his manager, Michael Koncz. In each of these lawsuits, the plaintiffs are respectively claiming at least five million US dollars compensation (the maximum allowed in class-action lawsuits in the USA) from the defendants for supposedly duping pay-per-view watchers, fans who bought tickets to the fight and even gamblers who bet on Pacquiao. The general logic seems to be that the members of the class of people being represented would not have paid to see the fight or bet on Pacquiao had he disclosed his injury.

Prior to the fight, Pacquiao signed a Nevada Athletic Commission medical questionnaire wherein he declared that he had not suffered any injuries to his shoulder or any other part of his body that may affect his performance in the fight or put his health at risk. It seems most likely that the medical questionnaire was not a tripartite agreement and that it only created a legal relationship between team Pacquiao and the Nevada Athletic Commission. The plaintiffs clearly believe otherwise, but team Pacquiao also alleges that his shoulder injury was in fact known to the organisers of the fight through other means of disclosure. For this reason alone, the lawsuits against Pacquiao should apparently fall flat. But this would be boring, so let us assume then that Pacquiao’s medical questionnaire also created an obligation to the public, that he did lie to the fight organisers and that there is in fact a cause of action as the plaintiffs have argued. Would the class of people being represented not have purchased tickets or pay-per-view hours (both of which were excessively priced, of course) or bet on Pacquiao had they known of the injury?

The question above would certainly be hard to answer for the people who want their money back for their tickets and pay-per-view hours. Who wouldn’t pay to see Mayweather fight, even if his opponent was at a disadvantage? Their case would be difficult to prove, and it appears as though the best argument for the spectators lies in a statement by Texan plaintiffs that they did not get their money’s worth as “[t]he fight was not great, not entertaining, not electrifying. It was boring, slow and lacklustre”. Therefore, they want their money back? A similar lawsuit was brought, unsuccessfully, against pop band Milli Vanilli when disappointed fans realised that the vocalists had been lip-syncing through their live shows. But everyone knows that Britney Spears lip-syncs and her shows still sell out; and in Las Vegas too, no less. Therefore, it seems as though the Britney Spears defence should work for Pacquiao.

However, would the gamblers who bet on Pacquiao still have bet on him had they known of the injury? Almost definitely not, or at least not as much, so it is fair to assume that this argument may be valid. Nevertheless, this assumption could prove to be wrong as well. One of the many problems with gambling is that it is not enforceable. In many countries, including South Africa and the USA, gambling agreements are against public policy and, while not prohibited by law, they are not enforceable through the law, which is why you pay for your chips upfront at the casino. A problem now arises for the gamblers, because while Pacquiao may have ruined their gambling agreements, these agreements do not actually exist in the eyes of the law. Therefore, the only remaining avenue would be delict. However, for a delictual claim, one would still need to prove unlawfulness.

Is it unlawful to not disclose all the facts to people who would potentially bet on you? Here too, it would be reasonable for Pacquiao to be in the clear because his medical questionnaire probably only created a duty to the Nevada Athletic Commission. If there were a legal duty between an athlete and gamblers, this logic would require a separate ‘Gambling Assurance Form’ (or something similar) that one would need to sign to let potential gamblers know, roughly, what their odds were in betting on you. Not only does this seem very impractical, but such an undertaking, given its link to gambling, would probably not be legally enforceable anyway. If it were, then gamblers who bet on Mayweather could just as easily sue for damages because they would have bet more money on him, and thus won more, had they known that his opponent was injured.

But the blame needs to lie somewhere, probably. Perhaps the most likely culprits are the fight organisers. In the end, they are the ones that handle most of the money, authorise and oversee the betting and ensure compliance with the rules. The organisers must hold some responsibility to the viewing and betting public before setting the ticket and pay-per-view prices and opening up the floor to the bookies. Should that responsibility not flow further than taking Pacquiao’s word when he ticked the box on the right? Was it reasonable to accept all that money and put Pacquiao in a ring with the world’s other greatest boxer, who just happens to be undefeated and have twelve centimetres more reach on his jab, without even performing an independent medical examination? Maybe not.

Given the many legal hurdles in place, the lawsuits against Pacquiao and his team seem likely to suffer from a technical KO, which makes the very large plaintiff turnout surprising. But while some are clearly disappointed with the entertainment value of the fight itself, it is hard to ignore how much interest and social debate these two fighters have stirred up without so much as a blood-nose in the ring. The Fight of the Century? Perhaps not. And the title of Court Case of the Century has already been clinched by an athlete of our own. Maybe the best the plaintiffs can hope for is a rematch and a few complimentary Britney Spears tickets.

Matthew du Plessis – Practitioner
matthew@rademeyer.co.za

Kim Rademeyer – Partner
kim@rademeyer.co.za

Politics, Policies & Protests Plague The CIPC

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In an interesting turn of events that has caused much speculation amongst the public, Astrid Ludin, the Commissioner of the Companies and Intellectual Property Commission (CIPC), is the latest senior public service sector head that has recently been targeted for suspension.

The Business Day reported that Ms. Ludin, who has served as the CIPC watchdog since 2011, had received a suspension notice over allegations related to procurement of services and payment of salaries in contravention of the Public Finance Management Act after a forensic report was conducted by Gobodo Forensics and Investigative Accounting (the Gobodo report). The Gobodo report found that Ms. Ludin had irregularly appointed accounting firms HT & Co and Calculus without following proper procedures. Other alleged irregularities related to her approval of a R25,000 scholarship for an employee, appointment of maintenance and contract workers, an information technology contract and salary adjustments for staff.

At the time of receiving the suspension notice, Ms. Ludin stated: “My understanding is that the minister will apply his mind before deciding on a suspension. There are no grounds for my suspension in my view and I am sure the minister and his legal advisers will come to a similar conclusion”.

Mr October, the Director General of the DTI explained that the findings of the Gobodo report did not relate to matters of corruption or personal gain by Ms. Ludin but to compliance with technical procedures and processes. Mr. October added that Ms. Ludin had done “an excellent job” in turning around the CIPC. Indeed, under Ms. Ludin’s supervision, the commission has undergone significant improvements over the last few years. The CIPC launched their modern new website in 2014 which is accessible and interactive. It is now possible to do most applications and submissions electronically online and the CIPC has slowly begun to achieve faster turnaround times.

Rob Davies, the DTI Minister, claimed that Ms. Ludin had failed to take employees along with her in her drive to modernise the commission, which he said was wracked by instability. He commented that “It was not an easy labour relations environment. There were a number of issues which we felt needed to be attended to and there was a certain amount of resistance from Ms. Ludin, who said I did not have the authority to tell her to do various things. It was becoming increasingly difficult for her to retain the confidence of staff”. Mr. Davies also stated that the trade union had presented the DTI with a petition in 2014 raising questions of management and calling for Ms. Ludin’s resignation. This was what inspired a forensic investigation into the various alleged irregularities.

Ms. Ludin commented that the commission, its staff and its ability to deliver it service had been periodically compromised, particularly when the DTI had declined to support management’s authority to run the organisation. After a paperless back-office system and automated processing were introduced, the CIPC experienced protests by NEHAWU (National Education Health and Allied Workers’ Union) on two occasions, against which Ms. Ludin claims the DTI had failed to support her. Ms. Ludin stated: “I have highlighted to the minster the risk that the DTI support for the NEHAWU agenda is perceived internally as a licence for illicit activities with intermediaries and demands for bribes”.

Ms. Ludin communicated to her staff that she felt a lack of support from her Department of Trade and Industry (DTI) minster and that there seemed to be a concentrated effort to remove her from her position, which ultimately led to her tendering her resignation, effective 1 June 2015. She stated: “I am resigning because I am no longer willing to exercise the role of commissioner without the support of the minister of the DTI, to whom I report, in the face of sporadic illegal industrial action intended to create a climate of intimidation, and allegations of misconduct and corruption intended to discredit me and some members of my management team”.

We can’t help but wonder how Ms. Ludin’s resignation will affect the operation of the CIPC. Only time will tell…

Kim Rademeyer – Partner
kim@rademeyer.co.za

Protecting The Easter Bunny

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While the Easter holidays mark an important event in the religious calendar, little kids everywhere (including the little kid inside of us all) also know it as a holiday filled with chocolate eggs and bunnies.

It is also the time of year when chocolate companies rub their hands with glee as sales sky rocket. Companies use this opportunity to create Easter branded products you may even begin to recognise on the shelves based on their unique appearance. While you are munching away through your stash of chocolate treats, here is a little food for thought:

Is that chocolate bunny subject to IP protection? The European Court of Justice was asked to rule on that very issue.

On 18 May 2004, Lindt filed an application for registration of a Community trade mark. Registration was sought for the three-dimensional mark consisting of the shape of a chocolate rabbit with a red ribbon and which, according to the description in the application was red, gold and brown.

The goods in respect of which registration was sought was in Class 30 of the Nice Agreement of 15 June 1957 and corresponded to the following description “Chocolate and chocolate products”. By decision on 14 October 2005, the examiner rejected the application on the basis that the mark was devoid of any distinctive character. The examiner also held that the mark did not acquire distinctive character through use as the evidence provided only related to Germany.

Lindt filed an appeal to the decision and on 11 June 2008, the Appeal Board held that the shape, the gold foil and the red ribbon with a small bell, considered separately or as a whole, could not give it distinctive character in relation to the goods concerned. It was held that rabbits are one of the typical shapes which chocolate products may take, especially at Easter and the mark was held to be devoid of distinctive character. A further appeal was filed the European General Court, who upheld the decision of the Appeal Board.

The matter was then referred to the European Court of Justice (“ECJ”). Lindt argued that the crouching bunny in combination with the gold foil, red ribbon and bell were distinctive as customers were able to distinguish their products based on this unique appearance. Lindt also argued that the mark had acquired distinctive character through use in Germany and Austria and the United Kingdom.

The ECJ held that an assessment of whether the shape of the rabbits on the market are similar or whether there is, from the point of view of the consumer, a difference between the rabbit at issue and the other shapes of rabbit, so that the shape of rabbit at issue has distinctive character is a question of assessment of the perception of consumers and therefore a question of fact. The ECJ held that the facts could not be reassessed as there was no mistake in the interpretation thereof. The General Court’s ruling in this regard was therefore upheld.

It was also held that in order to prove that a mark has acquired distinctive character through use; proof thereof must be provided at the time of filing. As Lindt had not provided this proof at the time of filing, it was held that the mark did not have distinctive character and the appeal was dismissed.

So it appears that the Easter bunny is not, in fact, distinctive.

Hillary Brennan – Practitioner
hillary@mrf.co.za

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