Category: Articles

The .AFRICA domain: shooting out the lights

The .AFRICA domain: shooting out the lights

The new domain .africa, has had one of the most successful starts of any of the new geographic top level domains (TLDs). In fact, .africa finds itself amongst the top 10 launches. We consider the .africa domain to be an indispensable extension for all businesses that conduct work on the continent.
Did You Know: you do not have to hold a physical presence on the African continent in order to hold a .africa domain registration. The new .africa domain is aimed at individuals and organisations to showcase their brands across the continent with domain names available to anyone, anywhere.

 

And there’s more good news: with immediate effect: you’ll now be able to secure your own .africa registration for less than R1,000.

 

And remember: If you don’t secure your brand with a .africa registration, you can be sure: somebody else will

Mandela Day Charity Work

Mandela Day Charity Work

As part of our commitment to Mandela Day, the Margo team participated in a collection of clothing and apparel for the Strathyre Girls’ Home. The idea behind this project is not simply to collect clothing – there is a far deeper significance: we are intentionally focussing our efforts on supporting young women, and specifically on helping them to secure employment. Having just a few items of formal clothing is often all that separates a young woman and securing employment.

 

Pictured here is a sample of the clothing, handbags, shoes and apparel that was handed over to the Strathyre team. The sizeable donation was made possible thanks to the tremendous generousity of our friends at TPN, ProSol, ACS, and Adv Ilse Joubert.

 

We have also decided to make our commitment to Strathyre a more permanent, ongoing one. In addition, if any of our colleagues or clients would like to contribute to this cause, we will gladly collect the donations from your office, and have these delivered.

 

A Sense Of Humour Failure – when is a parody no longer funny?

A Sense Of Humour Failure – when is a parody no longer funny?

There is a common assumption that there’s no harm done in parodying a trade mark. Many believe that the idea of free speech, or a simple attempt to inject humour somehow provides some form of defense against trade mark infringement. This couldn’t be more wrong, as two recent incidents illustrate. Reproduced here is a copy of a parody of a famous audit firm, and also of an advert placed by a political party. The significance and parody inherent in each will be obvious to the politically-astute South African reader.

Readers are cautioned: the Trade Marks Act does not tolerate acts in which the reputation of a trade mark is tarnished or diluted. The relevant section in the Act states, specifically, that it is an act of trade mark infringement to use “…a mark which is identical or similar to a trade mark … [if it is] well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception”.

Proudly South African, the owner of the second of the affected marks, has already indicated that it intends taking legal action against the political party responsible for publishing the parody. The purpose of this article is not to comment on whether that action would likely succeed. Instead, we simply use these latest incidences to highlight one, clear certainty: tinkering with well known trade marks is bound to get you into a considerable amount of trouble. It’s no laughing matter!

 

**The views expressed in the parodies are not necessarily those of Margo IP Attorneys. But they might be.

PASSING OFF – AN IMPORTANT POINT OF PROVENANCE (ORIGIN OF GOODS)

PASSING OFF – AN IMPORTANT POINT OF PROVENANCE (ORIGIN OF GOODS)

The unlawful act of passing off occurs when X misrepresents that his goods and/or services are the same as Y’s. To be successful in a passing off claim, Y must show that, (1) he has a reputation in the goods and/or services, (2) that X has misrepresented to the public that its goods and/or services are the same as his and (3) that, due to this misrepresentation, Y has suffered damages.

The issue of passing off was raised recently before the SCA in the case of Herbal Zone. In it, the Appellant was not successful in its claim of passing off because it could not prove that it had a reputation in the goods – it is an interesting exercise to explore why. To be frank, however, the Herbal Zone judgment was coloured more by the paucity of evidence than it was by any issue relevant to passing off – but where that judgment does present something new and interesting is in the issue of provenance, as we explore below.

The evidence that was led by the Appellant created some confusion as to which company held the rights and goodwill in the product. Several players were involved in a confusing, veritable rabbit’s warren of intersecting rights and allegations. To complicate matters further, neither of the parties had attempted to register any trade marks for the product in question before this matter went to court. It appears that only once the relationship had soured between the parties did they both attempt to register the trade mark. [This issue, of which party can lay claim validly to the trade mark, now lies before the Trade Marks Office Tribunal]. Before the SCA, neither party could lay claim to the reputation vested in the trade mark because neither party had proprietorship of any trade mark. As a result, the court then had to look at the issue of provenance. In other words, which company is the primary source of the products in question?

This was the second critical issue that had to be dealt with by the SCA. To summarise the detail: while one of the Appellants was able to demonstrate that he was the proprietor of another product of the Appellants, he could not demonstrate, on the evidence, that the Appellants had built-up goodwill and a reputation in the product. Accordingly, the first hurdle to proving passing off could not be overcome – and the matter ended there.

The important element to be crystallised from the Herbal Zone judgement is that the courts may rely on the issue of provenance when deciding on the matter of reputation. This places tremendous pressure on the Applicant, if it does not have a registered trade mark relating to the goods and/or services in question. In such cases, for an Applicant to show that it has a clear and direct link to those goods and/or services it must, at a minimum, produce very strong, clear evidence of this provenance.

The moral of the story is: to avoid a situation such as this, it is always advisable to file trade mark applications for your logos.