South Africa: OAPI Trade Marks: It Pays To Oppose

Last Updated: 22 January 2019
Article by Spoor & Fisher

Recent OAPI trade mark opposition judgments highlight the fact that the system works. Most of the oppositions discussed here were based on confusing similarity with earlier registrations, but one was based on the relatively rare ground of deceptiveness. Trade mark owners with commercial interests in OAPI member states should monitor OAPI trade mark registration activity carefully, and they should be prepared to file an opposition when they feel it is warranted.

Confusing similarity

Article 3(b) of Annex III of the revised Bangui Accord ("Accord") deals with a refusal based on an earlier registration. It talks of the 'same or similar goods or services' and a mark 'that it is liable to mislead or confuse.'

SEVEN UP v ICE UP

In this case, The Concentrate Manufacturing Company of Ireland (also trading as Seven-Up International) - the owners of OAPI registrations for the trade marks UP, SEVEN UP and 7UP in class 32 - opposed an application by Mehmet Murat Göymen for the trade mark ICE UP in class 32.

The opposition was successful. On 3 December 2018 the Director General handed down a judgment in which he said that there was a likelihood of confusion because of the visual and phonetic similarities between the two parties' marks.

NEXANS v NEXUS

In this case, Nexans - the owners of an OAPI registration for the trade mark NEXANS in class 9 - opposed an application by International Commercial & Consulting Corporation for the trade mark NEXUS in Class 9 (which had a certain degree of stylisation).

The opposition was successful. On 3 December 2018, the Director General handed down a judgment in which he said that there was a likelihood of confusion because of the visual and phonetic similarities between the two trade marks, and the fact that they covered identical or similar goods.

HUGO BOSS v BIG BOSS

In this case, Hugo Boss Trade Mark Management GmbH & Co. KG - the owners of OAPI registrations for the trade marks BOSS and BOSS HUGO BOSS in classes 9, 14, 18, 25 and 28 - opposed an application by Cutimex International Limited for the trade mark BIG BOSS in Classes 17 and 18.

The opposition was successful. On 3 December 2018 the Director General handed down a judgment in which he said that there was a likelihood of confusion because of the visual and phonetic similarities and the overlap or similarity of goods. He went on to make certain points - the average consumer does not have the two trade marks in front of them at the same time, and the average consumer does not hear the two trade marks spoken one after the other.

SUN Device

In this case, Vlisco B.V. - owner of OAPI registrations for the trade marksSUPER-WAX and VVH (IN SUN) Device in class 24 - opposed an application by Anatovi Afiwoa Veronique to register the trade mark AVOGAN WAX & Sun Device in Class 24. No counter-statement was filed, and on 3 December 2018, a judgment was handed down in the opponent's favour.

Deceptiveness

Article 3 (d) of the Accord prohibits the registration of a mark that is 'liable to mislead the public or business circles notably as to the geographical origin or characteristics of the goods or services.'

HOLLANDAIS

In this case, Vlisco B.V. (a Dutch company) opposed applications filed by Orientar Imp. & Exp. Co., Ltd. (based in China) to register the trade marks PETIT HOLLANDAIS and PH PETIT HOLLANDAIS & Device in class 24 - the opposition was based on the argument that the use of the term HOLLANDAIS was likely to deceive the public and commercial circles into believing that the goods came from the Netherlands.

The opposition was successful. On 3 December 2018 the Director-General handed down a judgment, in which he acknowledged that the Netherlands has a reputation in OAPI member states for textiles of a high quality.

OAPI is the single registration system that covers the following countries, and an OAPI registration is indeed the only way of getting trade mark protection in these countries: Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and the Union of the Comoros.

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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