Africa IP Highlights 2022 #2: All about trade marks

Yesterday, it was all about key developments in the copyright field in the Africa IP Highlights 2022 – the result of collaboration between myself and Doreen Adoma Agyei and Clarisse Mideva. 

Today, it’s all about trade marks.

January: In South Africa, a High Court ruled on a trade mark dispute between various dance organizations responsible for organizing dance competitions and/or dance championships across different dance genres in South Africa. The court held that in so far as the applicant, South African Dance Foundation had obtained trade mark registration for DanceSport Championship and South African Open Dance Championship, the use of the word “DanceSport” by the 2nd respondent (DanceSport South Africa) is likely to confuse the public (especially the dance community) that the 2nd respondent is associated with the applicant.

Image by: Riana Harvey

February: South Africa’s Supreme Court of Appeal in LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and the Registrar of Trade Marks upheld an appeal against the decision of the High Court ordering the removal of over 30 of the appellant’s trade mark registrations from the register of trade marks, in terms of ss 10(2)(a), (b) and (c), s 10(13) and ss 27(1)(a) and (b) of the Trade Marks Act 194 of 1993. These marks related to (a) the word POLO; (b) pictorial devices of single polo players, each astride a pony engaged in play and (c) pictorial devices of two polo ponies, each with polo players astride them engaged in play. Section 10 deals with non-registrability of a mark for lack of distinctiveness (sub-section 2) and likelihood of confusion or deception arising from manner of use of mark (sub-section 13); s 27(1)(a) deals with registration without a genuine intention to use coupled with non-use; while s 27(1)(b) deals with non-use for five years or longer. Also in February, a High Court in Kenya delivered a judgment on a Preliminary Objection that was filed by the Respondent in  City Eye Advertising Agency vs Mwenge Miraa Sacco Ltd, where the Applicant argued that the Respondent infringed its trade mark, which has the word ‘MIRAA’, a device of miraa and is registered to offer branding services. The respondent refuted the allegations and filed a notice of preliminary objection raising the point that the court lacked jurisdiction to hear matters touching on intellectual property rights as it pertains to a registered trade mark, because the same ought to be heard by the Industrial Property Tribunal. The Court held that the objection that the court lacked jurisdiction was grounded on the misconception that the dispute is governed by Industrial Property Act when it is not. Instead, the Trade Mark Act deals with trade marks and confers jurisdiction on the High Court. Being so misconceived, the court stated that the objection lacked merit and was thus dismissed. 

March: the Applicant in Namaste Laboratories LLC vs Zelfa Enterprises Ltd filed an application before a High Court in Kenya seeking orders of injunction to restrain the respondent from importing, distributing, selling, offering for sale, advertising, marketing, stocking, or otherwise dealing with hair and skin care products ranging from relaxers, oils, shampoos, hair grease whatsoever that infringe on the Applicant's trade marks. The Applicant argued that it had developed unique products and had obtained trade mark registration for the words "Olive", "Oil", "Olive Oil", "Hair", "Sheen Spray", and the letters "0", "R”, “S” and the "Olive Fruits Device" each separately and apart from the mark as a whole. The Applicant further argued that the Respondent had infringed and continued to infringe its registered trade mark and was passing off their products as those of the Applicant's thereby deceiving the Applicant's customers that it is the Applicant and causing irreparable damage to the Applicant's goodwill, reputation and market connections. The Respondent denied the alleged infringement and added that the certificate of registration of trade mark produced by the Applicant contained a disclaimer that stops the Plaintiff from exclusive use of the phrase "Formerly Organic Root Stimulator"," Olive"," Oil”,” Olive Oil”, “Hair”, “Sheen Spray”, the letters: “O” “R” “S” when used separately. The respondent contended that the applicant could not, therefore, claim that its rights have been infringed since no one can claim exclusive use of the disclaimed words and are open for anyone to use, as they are available for other businesses to use in marketing comparable goods or services. The Court held that it was not disputed that the applicant is the registered owner of the trade mark “O” R” S” thus giving the applicant the exclusive right to the trade mark, however, the Applicant had not made out a prima facie case to warrant the granting of orders of injunction and that the Applicant did not place sufficient evidence to sustain the claim on loss of goodwill. The Application was therefore dismissed. Also in March, a High Court in South Africa, directed the defendant who was using “East Coast Soul Kitchen” on its webpage and Facebook page to remove such references. 

May saw South Africa’s Supreme Court of Appeal (SCA) refuse an appeal challenging the decision of the High Court that the mark PACIFIC (appellant’s trade mark) was not infringed by the marks: ATLANTIC, ATLANTIC WAVE, ATLANTIC MENTHOL, ATLANTIC BREEZE, ATLANTIC BLUE, ATLANTIC CORAL, ATLANTIC APPLE CRUSH and ATLANTIC CHERRY CRUSH or any other marks so similar thereto. The SCA agreed with the High Court that it is unlikely that PACIFIC and ATLANTIC will deceive or confuse consumers. Also in May, a short filmmaker (short film not short in height) threatened to institute an action against Friesland Food Wamco Nigerian Plc, for trade mark infringement for using the expression “something hooge” to advertise and promote their product. The filmmaker claimed that he registered the expression as a trade mark. This Kat wonders how such  expression would satisfy the registrability requirement.

In June, the SCA dismissed Cochrane Steel’s appeal challenging the High Court’s decision that the respondent’s use of CLEAR VIEW on its website amounted to trade mark infringement and passing off. The SCA agreed that the context of use by the respondent was bona fide and descriptive and therefore, not infringing. Cochrane Steel owns various trade marks including CLEAR VU.

November: It was a cut-and-dried case of trade infringement and passing-off in Hendler & Hart (Pty) Ltd v BV Cookware (Pty) Ltd where the defendant was found to be selling kitchenware products in packaging bearing a mark closely resembling the applicant’s HART trade marks.

In December, the Supreme Court of Appeal of South Africa directed the respondent in Dart Industries Incorporated and another v Botle Buhle Brands (Pty) Ltd and another to stop passing off its water bottle as that of the applicant’s and/or as being connected with first applicant’s Eco bottle. The mark in this case concerned the shape of a water bottle and the court found that there was resemblance in the materials used in making the 2 water bottles, similarity in shape and colour range. It further held that the 3 elements of passing off viz - proof of the relevant reputation; reasonable likelihood that members of the public may be confused into believing that the business of one is, or is connected with, that of another; and damage - were met. Reputation was inferred from substantial sales and marketing by the applicant. The two bottles were found to be confusingly similar and in the court’s view, the respondents should have but did nothing much to distinguish their water bottle from the applicant’s.