Category: Uncategorized

(Magnificent) New Headquarters For The Margo® Team

(Magnificent) New Headquarters For The Margo® Team

 

We are exceptionally proud of our new headquarters, nestled in the new BluBird Offices. Operations remain overseen by the imposing portrait of Judge Cecil Margo (former Commissioner Of Patents) while facilities are of the best state-of-the-art solutions available. The perfect blend of traditional values with modern ingenuity.

It’s the Margo® difference. Because “good enough” simply isn’t good enough.

 

South African Copyright Law In Peril – Another government department makes a hash of things

South African Copyright Law In Peril – Another government department makes a hash of things

 

There is no delicate way to present this article. South African copyright is in dire straits. In recent months, you might have noticed a series of reports of all manner of organisations pleading with Pres Ramaphosa to send back the controversial Copyright Amendment Bill (“CAB”) to Parliament for reconsideration. In simple terms: what, exactly, is this all about? And why are matters so serious?

 

In summary: the CAB was steamrollered through Parliament, the National Assembly and the National Assembly Of Provinces, all in record-time, under the stewardship of the Department Of Trade & Industry (“DTI”) – the same ministry responsible for the running of the Patent, Design and Trade Marks Offices. Public comment was invited (in very much the same way that Stalin & Chairman Mao invited “constructive criticism” on their running of affairs).  The response was farcical and shambolic (in the proper sense of the word): countless expert IP practitioners, and other skilled practitioners, produced volumes of commentary that dwarfed the size of the Bill itself, more than one-hundred-times-over! And yet, the DTI refused to embrace the advice of the experts. In the deluge of response, not a single recommendation was accepted.

 

There are too many flaws in the CAB to mention here. For present purposes, it is enough to point out that it does not pass constitutional muster, it places South Africa in contravention of its obligations under several international treaties. The document has been drafted by authors who, almost certainly, have no experience at all in copyright law or legislative interpretation. Perhaps the largest single problem with the CAB is the proposed imposition of a “fair use” exclusion: a vague, desperately broad & poorly crafted attempt to permit unrestrained exploitation of copyright–protected works. Regrettably, off-the-cuff comments by a number of politicians (notably: former Minister Derek Hanekom) in support of this exclusion has only served to exacerbate matters.

 

The position is redolent of the misadventures of another Ministry, that of Science & Technology (“DST”) which, in 2014, established an “Expert Panel”, tasked with the preparation of a policy document on the R&D tax incentive. The DST was insistent that no intellectual property experts would be permitted to participate on or make recommendations to the Panel. The inevitable result was the precipitated demise of the entire incentive, rudderless in the vacuum of experts.

 

In the latest salvo to be fired against the CAB, just last week, the US government has threatened to withdraw South Africa’s preferential trade status, should the Bill be adopted in its present form. If that were to occur, it is expected that South Africa could lose up to R12b in exports.

 

In both instances, the message is the same: not heading the advice of specialist IP practitioners in matters steeped in IP is a recipe for unmitigated catastrophe. We will certainly report updates, as they arise.

Increase In Patent & Design Fees – Effective: 1 July 2019

Increase In Patent & Design Fees – Effective: 1 July 2019

 

An increase in official fees for all South African patent cases and design cases will be introduced next month.  South African trade mark charges remain unchanged.

Different Charging Scales

For the first time, different charges will apply depending on the size of the proprietor. Two scales apply:

  • Small, Medium & Micro Entities (SMMEs) will pay a lower fee; while
  • Corporate Entities will pay a significantly higher fee.

Any entity that is not a SMME, or any applicant that does not state its status, is automatically regarded as a Corporate Entity.  There is no clear definition yet on what qualifies as a “SMME”, and this will vary depending on your industry sector. For now, we believe that to qualify as an SMME, at a minimum you must have:

 

  • fewer than 100 – 200 employees (in all branches & subsidiaries); AND
  • an annual turnover of less than ZAR4m – ZAR5m; AND
  • total gross assets (excluding fixed property) less than ZAR2m – ZAR18m.

 

As soon as there is more clarity on the definition, we will communicate this to you.

 

The Major Cost Increases

The most significant cost increases (averaged) are these:

Aspect Current Fee NEW Fee       (SMME) NEW Fee (Corporate)
New Patent Application R590 R590 R1,100
Annual Patent Renewal R130 R130 R1,400
New Design Application R240 R240 R540
Annual Design Renewal R120 R120 R1,000

 

Annual Increases

It has also been advised that government charges will now increase by 5% annually, with no distinction between SMMEs and Corporate Entities.

 

Suggestion To Avoid The Increases

It is possible to pay all patent and design renewals in advance, even for pending applications. This could save Corporate Entities several thousand Dollars over the lifetime of a patent. We invite interested clients to contact us before July 2019 if you wish to take advantage of this discount.

 

Our courts confirm again additional protection offered by registered trade marks

Our courts confirm again additional protection offered by registered trade marks

Trade mark protection today is not just for words (e.g., NIKE® for shoes), personal names (e.g., LOUIS VUITTON® for handbags), logos (e.g., the Starbucks® mermaid for coffee). In fact, what most proprietors don’t realise, is that trade mark laws permit trade protection, equally, for in three-dimensional shapes, colours, scents, sounds, flavours, textures, and other “non-traditional” marks that identify and distinguish the source of goods or services.

In another brand new judgement, our courts have again confirmed that protection can be claimed for non-traditional trade marks, even where the article of protection is obscured from view when in use.

In March 2019, the Pietermaritzburg high court found a Chatsworth shoe company guilty of trade mark infringement of two registered trade marks owned by Bata Brands. Bata’s marks relate to the male and female shoes known as Bata Toughees. (Again, we stress: these were registered as trade marks, and not as registered designs). They are represented below:

 

The infringing shoe had a sole design depicted below:

 

You might be thinking of registered designs, which provide protection exclusively for the appearance of an article (specifically: it’s shape, configuration, ornamentation or pattern). But that is precisely the point: there is now a well-recognised overlap of protection available for the subject matter in the realm of trade marks.

The court agreed that: “The sole serves to assist customers who are illiterate, to identify the Toughees shoes by visual symbols of the sole design more readily”.

The lesson to be learnt here is: if you manufacture a product having a peculiar appearance, you would be well-advised to consider both trade mark and registered design protection: holding one does not prevent you from holding the other. And, as we see again in the Bata judgement, these registrations of non-traditional trade mark provides exceptionally effective protection.

 

实用提示:在中国和香港获得保护 (Practical Hints: Securing Protection In China & Kong Kong)

实用提示:在中国和香港获得保护 (Practical Hints: Securing Protection In China & Kong Kong)

 

The process of securing IP registrations in China is certainly, considerably, simpler than in previous years. There is now a further, practical mechanism to protecting your markets in China & Hong Kong. This suggestion is particularly helpful to those organisations that have logos or stylised English word marks that are applied to goods exported there.

Unlike in South Africa, where copyright registration is not available for such works, it is now possible to secure copyright registration in China and in Hong Kong. This is particularly helpful in cases where trade mark registrations are either not possible, or problematic.  In fact: copyright registration in China and Hong Kong is possible even in cases in which a trade mark registration has already been secured.  In other words: this mechanism provides alternative or additional IP protection in both China and Hong Kong.

What is more: both the associated costs and the fees associated with copyright registrations in China & Hong are considerably less onerous than trade mark applications. In short: this mechanism presents an excellent opportunity to secure at least some IP registrations in China and in Hong Kong.

If you have business interests in these territories, you would be well-advised to secure these registrations, if only for your primary marks.

When Being Identical Is Not Necessarily Confusingly Similar [1]

When Being Identical Is Not Necessarily Confusingly Similar [1]

In February and May 2018, in two unrelated matters, the SCA was called upon to judge two trade mark matters which, remarkably, had the following issues in common:

  • both involved an opposition to a pending trade mark application
  • the opponent’s mark and the opposed mark had an identical prefix – only the suffix differed
  • both parties applied their marks to the same class of goods; and
  • the opponent argued that there was a distinct possibility of deception or confusion between the two

 

And yet: the same court came to diametrically opposite conclusions in the two judgments! How can that possibly be? This article takes a comparative view of the two judgments, and attempts to reconcile the two – if only at a superficial level – it is not intended to be an exhaustive analysis.

 

The first of these cases to be argued was Dinnermates (Tvl) CC v Piquante Brands International (Pty) Limited & Another [2]. It is convenient to illustrate the key similarities between two cases side-by-side:

 

The second case was Novartis AG v Cipla Medpro (Pty) Limited & Another [3]. The similarities here were as follows:

 

[1] Darren S. Margo;  Registered Patent Attorney
[2] (401/17) [2018] ZASCA 43
[3] (728/17) [2018] ZASCA 64

 

 

In both cases, the respective opponents argued that the prefix was the dominant element of the marks in question and, accordingly, because they were absolutely identical, deception or confusion was bound to follow in the minds of the public when buying the products in question. (Other arguments were also advanced – those are not relevant to this discussion).

 

In the PEPPA case, the court disagreed with this argument, primarily for the reason that “PEPPA” was held not to be the prominent element: the court accepted that other, older third party trade marks, such as PICKAPEPPA and PEPPAMELT has been permitted to co-exist on the Register. The distinctive element of each mark in in this case was thus the suffix (DEW vs MATES), which were held to be wholly different from each other and, accordingly, the two marks were held not to be confusingly similar.

 

Conversely, in the CURI case, the same court adopted an entirely different line of reasoning, and arrived at the very opposite conclusion. It was common cause that both the Appellant’s and the Respondent’s goods in question here were scheduled antibiotics, that were capable of being dispensed by a pharmacist only on prescription by a doctor. Simply put – and as was argued by Novartis – the healthcare professionals, with their specialised knowledge, in this highly regulated market, would not be deceived or confused by the different names [4]. The court disagreed, and applied the same reasoning as it did in the 2012 Adcock Ingram judgment, holding that there was, indeed, a real likelihood of both visual and aural confusion amongst members of the public, including trained healthcare professionals.

 

Are The Judgments Mutually Contradictory?

The question is inescapable. With respect, I suggest that the judgments are not contradictory. In fact, the real difference between the two cases is that, in the PEPPA case, the trade mark applicant was able to adduce evidence of what was the dominant feature of the mark. Conversely, in the CURI case, the Opponent relied on a line of reasoning that had already been dismissed by the same court (and, it must be noted, in the very same industry) previously. One cannot argue successfully that skilled professionals in niche industries are incapable of being confused!

 

 

What Lessons Are To Be Learned From These Judgments?

To my mind, there are two: first, a superficial side-by-side comparison is not definitive of the issue. There is no substitute for thought & applied reasoning, and an analysis of which other marks co-exist on the Register – after all: trade mark cases do not exist in a vacuum. Second, the argument that skilled professions in niche industries are incapable of being confused between trade marks, unquestionably, is a non-starter.

 

[4] Interestingly, the very same argument was attempted before the same court just a few years previously in Adcock Ingram IP (Pty) Limited & Another v Cipla Medpro (Pty) Limited & Another 2012 (4) 238 (SCA)
Say “Fees!” PETA Ordered To Pay Costs

Say “Fees!” PETA Ordered To Pay Costs

In our recent newsletter, we told the tale of Naruto, the selfie-snapping crested macaque. In a nutshell: the People for the Ethical Treatment of Animals (“PETA”) argued before the US courts that monkeys are capable of owning copyright in their own capacity and, for that reason, Naruto should be regarded as the owner of copyright in the photographs that he had snapped – and not Mr David Slater, the photographer who complied a book of those photographs.

 

In a no-nonsense, firm judgment on the matter, a three-judge panel in the Ninth Circuit Court of Appeals denied both parties’ request for the case to be dismissed, and for their out-of-court settlement to be honoured. Instead, the court handed down judgment saying that monkeys cannot own copyright. To add insult to injury, PETA was ordered to pay costs.

 

[Readers will be interested to know: in South Africa, it is uncontentious that animals do not have the capacity to hold intellectual property rights. Only in America …]

 

One of the infamous selfies of Naruto, that caused all the fuss

Protecting Your .app

Protecting Your .app

Does your business run a dedicated app?  If so, there is a new domain that will be extremely important for you:  registrations for .app are now available. This provides an excellent platform to market, make available and maintain your app.  It is a natural progression of the .mobi domains that have been available for some time.

A word of caution, though: in order for it to work properly in browsers, you will need to configure the HTTPS serving. SSL certificates are available for purchase to meet this requirement – in you have any questions about .app registrations, you are very welcome to contact us directly.

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!