South Africa: Judging Trade Marks

Last Updated: 9 November 2016
Article by Delene Bertasso

Trade mark law may be contained in statutes, but judges are the ones who interpret the statutes. Judges are also the ones who eventually decide whether one trade mark is confusingly similar to another. It is these factors that make the "Question the Trade Mark Judges" event that recently took place at University College London so fascinating for anyone interested in trade marks.

The event was chaired by one of the best-known IP law judges in the world, Sir Robin Jacob of the UK. Sir Jacob was joined by judges and trade mark hearing officers from the UK, Italy and Europe's highest court, the Court of Justice of the European Union (the "CJEU"). Below is an overview of some of the key issues discussed at the event.

Advocacy

The judges agreed that good advocacy is important in trade mark cases, but that it's rarely decisive except perhaps in very finely balanced cases. The judges were, however, keen to point out that they value legal representation, something they are reminded of whenever they hear a case where there is no legal representation. Judges particularly appreciate being presented with well-researched and well-reasoned legal submissions in cases where there's little or no jurisprudence.

Unsurprisingly, advocacy seems to play a greater role in UK courts than in continental courts. This is important for those in South Africa, because the South African legal system is far more akin to the English system than those in continental Europe.

Although some judges maintain that they aren't swayed by advocacy style, some of those on the panel conceded that they may subconsciously pay a little more attention when a "rock star" lawyer appears before them. There are conflicting views as to what, if anything, can be read into the fact that a "heavyweight" is appearing in court. Can one conclude that a well-known lawyer's case must be right, because no hotshot would risk damaging his or her reputation by taking a losing case? Or can one assume that only confident, well-known lawyers take on difficult cases?

When it comes to oral submissions, short and sweet is definitely the way to go. In fact, when it comes to the CJEU, lawyers have a mere 15 minutes to say what they have to say, something that the UK representatives on the panel found disagreeable. The CJEU judge on the panel had this advice: don't simply repeat what's in your papers, bring something new and fresh to the hearing.

Judges

The issue of whether or not specialist IP law judges are necessary is a hot topic in many countries, including South Africa. Some on the panel said that it is unrealistic to expect to have trade mark specialists on the Bench and, rather, what is important in the selection of judges is diversity. An English judge on the panel said that, in his view, a judge needn't be a specialist to hear trade mark cases, pointing out that some of the best UK trade mark judgments of recent years have been handed down by a non-specialist judge, Lord Justice Neuberger. He did, however, suggest that a non-specialist would struggle with patent cases.

Hard and soft IP

A topic of much debate, especially in law firms, is whether trade mark law is easier than patent law or, as it was framed here, whether the distinction that seems to exist in the UK between "soft IP" (copyright, designs and trade marks) and "hard IP" (patents) is fair and accurate? The judges on the panel did not like the distinction much, and one suggested using the terms "creative IP" and "inventive IP" instead.

An interesting observation by one judge on the panel was that whereas patent cases tend to be more difficult, factually, than trade mark cases, they also tend to be easier, legally. The judges felt that it was hard to say which form of IP was the most valuable, especially as copyright is growing in importance due to digital technologies.

The role of trade mark law

Why does trade mark law exist? Is it to protect the consumer from confusion or is it to protect the assets of companies, in this case, their brands? The judges agreed that there has been a shift over time and that although trade mark law may have originally served a mainly public role, the emphasis now seems to be much more on the rights and interests of brand owners. A UK hearing officer on the panel suggested that the two functions can co-exist, and that the increased trade mark owner-centric approach needn't detract from consumer protection.

It is now clear that there can be trade mark infringement without consumer confusion. One example of this is that trade mark law now provides remedies against dilution and tarnishment of trade marks in cases where there may be no consumer confusion at all. This led to a discussion on whether issues like dilution and tarnishment should rather be dealt with through other areas of the law, such as competition law. One judge on the panel found it odd that in some countries trade mark law can be used to stop the parallel importation of genuine goods, another situation where there is no consumer confusion.

Parody

There was a discussion on whether parody should be recognised as a defence to trade mark infringement. All of the judges on the panel agreed that some parody defence is necessary and that it is a question of balancing rights: property rights and rights relating to freedom of expression.

Unsurprisingly, what is possibly South Africa's best known trade mark case, Laugh-It-Off v South African Breweries (the Black Label/Black Labour case), came up in the discussion. In this case, the Constitutional Court recognised the right of a parodist to produce T-shirts bearing a logo that looked like the Carling Black Label logo to make a point about labour practices in apartheid South Africa. The UK judge on the panel said that this was a good example of a case where trade mark rights had correctly given way to freedom to make political statements.

While there is quite a bit that those in South Africa can take from this event, it is good to know that South African jurisprudence contributed to the discussions too.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions