South Africa's Supreme Court of Appeal recently handed down two important judgments. One dealt with genuine use, the other with reputation.
In Westminster Tobacco Co v Philip Morris Products SA (March 16 2017), the issue was whether use made by Westminster (part of BAT) of its registered trade mark Parliament was genuine, and enough to save the registration from attack for non-use. The authorities tell us that use must not be "merely token, serving solely to preserve the rights conferred by the mark". They say that the intention behind the use must be "to maintain or create a share in the market for the goods or services protected by the mark".
The court accepted that BAT did put the mark Parliament in use with a view to protecting the registration. But there was more to it than that – the company was also keen to test a cigarette that would compete with low-cost brands that were eating into BAT's market share. Even though BAT's launch of the low-cost cigarette was not a great success and did not last very long, this did not stop the use from being genuine. These are probably the most important words in the judgment:
Genuineness is to be contrasted with use that is merely token, but the line is a fine one, because the use may be minimal… it may in part be prompted by the fear of removal from the register and be directed at protecting the proprietor's trade generally or preventing the mark from falling into the hands of a competitor.
Herbal Zone v Infitech Technologies (March 10 2017) was a passing off case involving an unregistered mark. In this case an aphrodisiac product that was manufactured by a company in Malaysia was imported into, and sold in, South Africa by a South African company. Who owned the reputation in the mark? The court said that it clearly did not belong to the importer, who had disclaimed rights to the IP in its agreement: "In the face of that disavowal it is difficult to see on what possible basis Infitech could nonetheless acquire the very rights it agreed did not belong to it."
But the court did accept the principle that an importer/ distributor can acquire a reputation in the goods that it sells. But only where it adds something to the mark or get-up "to identify itself as the source of the goods".
Wayne Meiring |
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