South Africa: The Swiss Army Knife And Multi-Purpose IP

Last Updated: 3 December 2015
Article by Ilse Du Plessis

Most Read Contributor in South Africa, September 2016

A recent court decision involving the Swiss Army knife gives an interesting insight into some of the intellectual property (IP) rights that a product can enjoy.

A US court recently ordered a company called B&F System Inc to stop infringing the rights of Victorinox, the company that manufacturers the famous Swiss Army knife. According to one report, B&F had been responsible for distributing "red-handled multi-function pocket knives copying the famous Swiss Army knife marketed and sold by Victorinox in the US for more than 50 years". Not only did the court issue an interdict (injunction), but it also ordered B&F to recall all infringing goods from its customers (retailers). On top of that, the court ordered B&F to pay damages of nearly US$10-million.

This statement issued by Victorinox after the judgment gives some strong hints into the rights involved here: "Since it was first introduced in Switzerland in 1897, our iconic 'little red pocket knife' has, in a most unique way, come to symbolize excellence in Swiss craftsmanship, innovation and unsurpassed quality that generations of consumers have come to trust from Victorinox Swiss Army knives. This legal victory protects our brand and, most importantly, protects consumers from confusion in the marketplace due to counterfeit product. We will continue to steadfastly pursue any person or organization that purports to deceive consumers with counterfeit products using the trademarked Swiss Army knife brand."

All this talk of trust, brand and consumer confusion makes it very clear that this case was about trade mark rights. Trade mark law obviously protects brand names, and clearly the brand name applied to a knife can be protected. Trade mark law also protects logos, and the logo applied to a knife – such as the cross used by Victorinox – can also enjoy trade mark protection. But trade mark law protects far more than just names and logos.

Colour is something that trade mark law can protect, and it's noticeable that Victorinox's statement refers to the "red pocket knife". As the rainbow only gave us seven, it's perhaps understandable that trade mark registration authorities and courts are reluctant to grant companies exclusive rights to colours. But they will do so when it's appropriate. It's appropriate when a colour has come to indicate the provenance of a particular product.

Regular readers of our articles will know that this is difficult territory. For example, Cadbury recently failed in its attempt to monopolise the colour purple for chocolate products in its homeland, the UK. Fellow British company BP has managed to get trade mark registrations for the colour green in certain countries, but its application in Australia was turned down. A few years back, Christian Louboutin managed to get exclusivity in the US to the colour red for the soles of shoes, but only in circumstances where the rest of the shoe is a different colour. In South Africa, the company that's probably most closely associated with a single colour is MTN, and it's well known that this company does have certain trade mark registrations for the colour yellow.

In addition to colour, trade mark law can be used as a way of protecting the shape and general appearance of the product. Again this is a difficult area, with the authorities acutely aware of the dangers posed by the indiscriminate registration of product shape and appearance. The courts in Europe like to say that shape will only be considered where it "departs significantly from the norm" – and even then it must also be proved that the shape's been used on a very extensive scale, and that it's regarded as a source indicator by the public.

Here are a few examples. Lego recently managed to get trade mark registrations in the EU for the shape of its little interlocking people. Chocolate manufacturer Nestle has, however, struggled to get trade mark protection for the shape of its four-fingered Kit Kat bar in the UK and the EU. Yet Nestle's South African trade mark registration for the Kit Kat shape was recently accepted as being valid by the South African Supreme Court of Appeal. It's a very difficult area of the law. But, difficult as it may be, it's worth getting trade mark registrations for shape. That's because trade mark protection can be for keeps – although a trade mark registration only lasts for 10 years, it can be renewed indefinitely.

As a common law country, South Africa also recognises the action of passing off. Here, trade mark registration is not a requirement, but it's all about one company having a reputation in a name or get-up, and another company causing consumer confusion through the use of a similar name or get-up. In South Africa, passing off is regarded as a species of unlawful competition, a wide-ranging area of the law that protects companies from actions that are contrary to the norms or morals of the marketplace.

Product appearance can also be protected through a design registration. In South Africa, it's possible to get a design registration for an aesthetic design as well as for a functional design. In either case, novelty is a requirement, which means that you can't get a valid design registration for something that's not new. You therefore need to apply for registration before you go to market with your product. The other thing to consider is that design registrations are time-limited – 10 years for functional designs, and 15 years for aesthetic designs.

Like the Swiss Army knife, IP law offers a variety of options.

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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