Worldwide: Foreign Trade Marks: Keeping Up To Speed

Last Updated: 4 September 2015
Article by Ilse Du Plessis

Most Read Contributor in South Africa, September 2018

South African companies that export their goods and services are well aware of the need to clear and register their trade marks in the countries where they do business. They do, however, also need to keep abreast of foreign trade mark developments. Here's a heads-up of some interesting developments from around the world.

China

Despite the apparent economic slowdown in China, South African companies remain interested in doing business there. Some may have been alarmed at reports regarding the Chinese trade mark woes of former basketball great, Michael Jordan. The player-turned-businessman has joined a long list of global giants that have experienced trade mark difficulties in China – think companies like Apple, Gucci, New Balance and Tesla.

The story about Michael Jordan is that he's lost his trade mark case against the Chinese company Qiaodan. Jordan is a well-known brand in the area of athletic shoes and apparel, and there are registrations for the trade mark in China. Jordan's basketball player silhouette logo is equally famous. Qiaodan, a company with no fewer than 6000 sports stores, has managed to register trade marks for its name in the face of the Jordan registrations – this is significant because Qiaodan is the Chinese transliteration of Jordan. Qiaodan also uses a very similar-looking basketball player silhouette. Jordan feels so aggrieved at the Chinese court's decision that he's taking the matter on appeal.

It is, however, worth bearing in mind that the trade mark landscape in China has improved greatly over recent years. Although China does have a trade mark registration system that favours the party that first files its application, it has in the past provided some relief to the owners of well-known trade marks. More recently, it has also required trade mark applications to be filed in good faith. In addition, an application can be opposed if the person who files it knew or should have known of the opponent's trade mark rights. Chinese law also has penalties for attorneys who act in bad faith in trade mark matters, and it has increased the damages that can be awarded for infringement to include triple damages in cases of bad faith, and penalties of up to 500% of profits earned from infringement.

All in all, a much improved and more welcoming system than before!

European Union

The EU remains a popular place for South African companies to do business and there is, of course, a single registration system known as the Community Trade Mark (CTM). There have been numerous developments and changes over recent years. There has been a court case that has had the effect that companies need to think carefully about whether or not they wish to file for the class heading, or whether they prefer to specify particular goods or services. There has also been a court decision that raises issues about whether or not a black-and-white logo registration is sufficient if the logo is, in fact, used in colour.

Another development includes the introduction of mediation as a way of resolving CTM disputes. There is now also a fast-track registration procedure – this procedure involves no extra cost, but simply requires the applicant to pay the filing fee at the time of filing, and to use standard classification terms that have been approved by the registry. In the near future a separate fee will be payable for each class covered (at present three classes can be filed for one fee), and the requirement of a graphical representation of the trade mark will fall away, hopefully making it easier to file more unusual trade marks like scents.

UAE

The authorities have imposed increases on official fees that make the eyes water (the weak rand doesn't help matters much!) For example, the official fee for filing an application in one class (or renewing a registration in one class) will now be in the order of R22000. 

What's also concerning is that the whole process of having an application examined and then having an opportunity to deal with objections is replaced by one where an application is simply accepted or rejected. An appeal can be filed against a rejection, and the official fee for that will be some R17000.

The official fee for filing an opposition to a third party's application goes up by an extraordinary 4000%, to some R35 000.

Companies wishing to protect their trade marks in the UAE should definitely consult with their attorneys.

Zambia

Zambia has also introduced fee increases for various trade mark activities, but these are not as significant as the increases in UAE. The increases are, however, in the order of 50% or more. Companies wishing to register in Zambia should get costings from their attorneys.

Algeria

Algeria will be joining the Madrid Protocol relating to the international registration of trade marks on 5 October 2015. There's nothing unusual about this, African countries are joining the international registration system in droves (Zimbabwe and the OAPI regional system joined recently).

What does make Algeria's accession slightly usual, however, is that the country has in fact been a member of the international registration system for many years, but through the Madrid Agreement rather than the Madrid Protocol. The older Madrid Agreement provides that a company that is in a member state can apply for an international registration once it has a registration in its own country. The newer and more popular Madrid Protocol, on the other hand, provides that the company can apply for an international registration as soon as it has simply filed an application for registration in its own country.

Botswana

Botswana now has a system of registering Geographical Indications (GIs). The first GI registration was granted recently. It went to the Scotch Whisky Association, and it's for the term Scotch Whisky. This is apparently the first GI registration in Africa for the term Scotch Whisky.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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