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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!

 

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.