Not much IP comes out of Grahamstown (not much of anything
does!). So it was with some trepidation that I read a recent trade
mark judgment of the Eastern Cape High Court. But apart from the
odd confusion between infringement and passing off (it could happen
to anyone!), and the fact that it's peppered with unwarranted
attacks on the Soutie language – the one blue was 'more
darker' the other, the two get-ups were 'startling
similar' - it's actually not that bad. The facts: a company
called Royal Salt has a salt brand called SEEPO. The product's
been around since the 1960s, and for most of that time it's
been sold in a predominantly orange get-up. The product's
particularly big in the Western Cape, where it has a 60-70% market
share, and the trade mark registration goes all the way back to
When this salt of the earth company discovered that some coarse
salt seller called Swartkops something or another was selling a
competitive product under the name SEESO in a predominantly orange
get-up, it... well saw red! Royal Salt sued for trade mark
infringement and succeeded – no surprise there, SEEPO and
SEESO are tres close, and the argument that SEESO was a contraction
of 'see sout', and therefore somehow descriptive, was taken
with a hefty pinch of salt. Royal Salt also successfully sued for
passing off, with the court finding that the colour did play a
major distinguishing role – the court was impressed by the
revelation that Royal Salt had, many years ago, tried to move from
orange to red, but had quickly reverted to orange when sales
plummeted. There was a further aspect – Swartkops had two
trade mark registrations, one for the name MARINA SEESO, and
another for the name MARINA in an oval logo, and it claimed that it
was simply using its trade mark registration for MARINA SEESO. But
it wasn't - what Swartkops did was have the name SEESO in very
large print, underneath the MARINA in an oval logo. Each of these
had an ® symbol alongside it. Which simply reinforced the fact
that it was using two separate trade marks, the registered MARINA
in an oval logo and the unregistered SEESO, but not the registered
trade mark MARINA SEESO. To rub salt in the wounds, the court went
on to order that the registration for MARINA SEESO should be
cancelled because it had always conflicted with the registration
for SEEPO. There are lessons here – colour can be an
important distinguishing feature, use your trade marks in the form
they're registered, and don't be a smart arse.
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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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