The IPKat is grateful to Daniel Greenberg for bringing his attention to the fact that South African telephone company Telkom has settled its dispute with Greg Stirton, the owner of the hellkom.co.za domain name. Stirton uses the domain name to run a site criticising Telkom’s pricing policy. While he uses modified parody versions of Telkom’s various logos, he does not sell any goods on the site (though he does give handy instructions on how to make your own Hellkom “merchandise”). Telkom brought a 5million Rand infringement suit against Stirton, claiming defamation, copyright infringement and trade mark dilution. However, following the Constitutional Court’s decision in the Black Labour case, where free speech trumped a dilution case, Telkom has decided to drop the case.
The IPKat wonders whether, even regardless of the free speech issues, Telkom had a dilution case. The South African legislation on dilution requires that the parties’ marks be similar. While both marks have the “kom” element in them, the “tel” and “hell” prefixes are pretty different. Also, Stirton added a pair of natty little devil horns to the figurative “keypad” element of Telkom’s marks. The IPKat wonders whether this is enough for the marks to be classed as dissimilar. It’s clear that the Hellkom mark is meant to be linked by consumers to Telkom’s mark, in spite of the visual differences and the IPKat notes that following Adidas v Fitnessworld, the prevailing standard in the EU seems to be that similarity is judged through the prism of why similarity is being looked for, i.e. the mark must be similar enough to cause consumers to link the later mark to the earlier mark. This would certainly be the case in the Hellkom/Telkom example, even though there are very clear distinctions between the marks.
Further coverage here
Wednesday, 7 September 2005
Posted by Unknown at 15:30:00