Month: December 2017

When Is An Abusive Domain Registration, Not Abusive?

When Is An Abusive Domain Registration, Not Abusive?

In our practice, not a week goes by where we don’t caution our clients very strongly to secure trade mark and (online) domain registrations for their major brands – and promptly. A recent decision of the Gauteng North High Court has shown, yet again, the dangers of not heeding this advice. The critical facts of Rostruct Mining (Pty) Limited v Rosond (Pty) Limited are uncomplicated: Rosond registered the domain www.rostruct.co.za in its own name and, when Rostruct Mining learned of this, it lodged a complaint of an “abusive registration” and sought an order transferring the domain registration to it.

The history of this matter is long and acrimonious, and the judgment fairly long and technical – those facts are not relevant here, except to note this critical aspect of the ultimate judgment: because Rostruct Mining could not show that it had any trade mark rights in the word ROSTRUCT, its case failed, and the Court refused to come to its aid. Simply put: Rostruct Mining’s acrimonious opponent retained ownership of (what we suggest is, arguably) a dubious, mala fide registration, leaving Rostruct Mining firmly over the proverbial barrel.

At the risk of repetition: had Rostruct Mining simply have invested just a few thousand Rand in a single trade mark registration – undoubtedly – it would have stopped Rosond at the very first hurdle. Instead, after incurring a legal bill many, many times that amount, it is left with nothing, and also the real prospect of having to change its own name.

Penny wise; Pound foolish – in this day and age, ignoring trade mark and domain registrations is a recipe for disaster. In cases such as the Rostruct Mining case, it can even force the consideration of the closure of a business!

 

NARUTO & HIS FRIENDS GET A SLICE OF THE BANANA

NARUTO & HIS FRIENDS GET A SLICE OF THE BANANA

Previously, we reported the woeful tale of copyright infringement in which photographer (Mr Slater) was sued by PETA  on behalf of a macaque named Naruto, a serial selfie-snapping simian. PETA argued that, although Mr Slater set-up the camera equipment to photograph Naruto and his friends, Naruto essentially took the photographs by activating the camera button itself, and therefore should own the copyright in the photographs. When Mr Slater published the photographs, PETA argued that Naruto should benefit financially from the photographs as he (Naruto) was, essentially, the copyright owner.

This court battle ensued for two years in America, where the court of first instance held that an animal cannot own any copyright and the case was dismissed. PETA appealed this decision and further arguments were heard in the appeal court in August of this year.

Fortunately, in what we regard as a victory for primate reconciliation, recently the parties reached a settlement in which Mr Slater agreed to donate 25% of his profits from the photographs to wildlife organisations that protect the macaque monkey.

Naruto is said to be very pleased with this outcome and has celebrated by putting on a banana banquet for his friends and some members of PETA. Mr Slater, unfortunately, has had to give up his photographic career due to financial ruin and is now a dog walker. [Editorial Note: we confirm that the contents of this paragraph (regarding the banquet and the dog-walker position are, in fact, correct, and that no facts have been embellished] On commenting on the case, PETA has said “Naruto and the famous ‘monkey selfie’ photographs that he undeniably took clearly demonstrate that he and his fellow macaques (are) …  beings worthy of having legal ownership of their own intellectual property and holding other rights as members of the legal community”. While their efforts to further animal rights is commendable, we think it’s safe to say that , from a purely legal perspective, the idea that a macaque could own copyright, is bananas.

Conducting Business In China – A (Cost-Effective) Practical Suggestion

Conducting Business In China – A (Cost-Effective) Practical Suggestion

Increasingly more South African firms are venturing into the Chinese market. It’s very encouraging to see how many of these firms are also acquiring Chinese trade marks to protect their intellectual property. We’re often asked for practical suggestions on how a foreign firm can bolster its position within the Chinese market, embracing the unique Chinese culture, while also protecting its rights. We strongly recommend registering Chinese-specific top level domains (TLDs). There are a number of very popular cases, including these:

Domain English Translation Domain English Translation
.cn —— . 网络 .internet
. 中国 .china . 移动 .mobile
. 公司 .company .中文网 .online
. 企业 .enterprise . 网店 .shop
. 集团 .group . 商店 .store
. 广东 .guandong . 商标 .trademark
.hk .hongkong . 网站 .web
.香港 .hongkong . 在线) .website

Ideally, each of your key trade marks or product lines should be supported by a complimentary TLD registration. They’re relatively inexpensive, extremely quick to secure, and provide an extremely efficient weapon against copycats and cybersquatters – Chinese TLDs offer an effective, efficient tool to cementing your position in the Chinese market.