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

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

The “i” in Knowledge

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A VIEW ON INDIGENOUS KNOWLEDGE IN SOUTH AFRICA

“… knowledge, unique to a given culture or society, which accumulates over generations, as communities interact with their environment …”

Even though certain manifestations of indigenous knowledge have already been recognised and protected by the Patents Amendment Act of 2005, the President recently assented to The Intellectual Property Laws Amendment Act 28 of 2013 which was published in the Government Gazette on 10 December 2013 (hereafter referred to as “the Act”). The Act will only come into operation on a date fixed by the President by proclamation in the Gazette.

The function of the Act is to provide for the recognition and protection of certain manifestations of indigenous knowledge as a species of intellectual property. The following are to be amended:

  • The Performers’ Protection Act of 1967

to provide for the recognition and protection of performances of traditional works, by providing copyright protection to the performance of a traditional work, whether it is in the form of  an artistic work, dramatic work, literary work or a musical work as defined in the Copyright Act;

  • The Copyright  Act of 1978

to provide recognition and protection for indigenous knowledge by providing the indigenous community from which the knowledge/work originated and acquired its traditional character, the right to authorship and the right to receive royalties and benefits associated with the economic exploitation of the works;

  • The Trade Marks Act  of 1993

to provide for the recognition of indigenous terms and expressions and for the registration of such terms and expressions as trade marks and to provide for further protection of geographical indicators, collective trade marks and certification marks in so far as they relate to indigenous cultural expressions or knowledge; and

  • The Designs Act of 1993

to provide recognition and registration of indigenous designs which can either be an aesthetic or functional design with an indigenous or traditional origin and a traditional character.

The Act also makes statutory provisions which provide for the establishment of a National Council in respect of indigenous knowledge, a National Database for the recording of indigenous knowledge and a National Trust and Trust Fund for the purposes of indigenous knowledge.

Ultimately the Act aims to empower communities and prevent exploitation of their knowledge. Communities will be able to form business enterprises in order to commercialise the traditional knowledge and rightfully benefit from it economically. The Act has however come under criticism a more in-depth review of certain aspects of the Act will follow in future.

Should you have any queries relation to Indigenous Knowledge, please feel free to contact us and one of our specialists will assist you.

MRF
info@rademeyer.co.za