Africa IP Highlights #2: The trademarks arena

Yesterday, it was all about key developments in the copyright field in the Africa IP Highlights 2021 – the result of collaboration between myself and several IP practitioners and researchers across Africa: Caroline Wanjiru Muchiri (Centre for IP and IT Law, Strathmore University, Kenya); Ekene Chuks-Okeke (Banwo & Ighodalo, Nigeria); Marius Schneider and Nora Ho Tu Nam (IPvocate Africa, Mauritius); Ruth Mulenga Sinkala (PhD Candidate, University of Cape Town), Vanessa Ferguson, Sibongile Dee and Regardt van der Merwe (Von Seidels, South Africa).

Today, it’s about the trademark arena.

January: In South Africa, Swatch filed an appeal in Swatch AG (Swatch SA) v Apple Inc against the judgment of a High Court, which had ruled that the iWatch and Swatch marks were not confusingly similar as to be likely to deceive or cause confusion. The Supreme Court of Appeal (SCA) upheld the judgment of the High Court and dismissed the appeal. In its judgment, the SCA considered that to make a proper comparison of the two marks, the overall impression given by the marks must be considered, bearing in mind their distinctive and dominant components. It had to be decided how the marks would be perceived by the average consumer, in the relevant market, who is reasonably well-informed and observant, taking account of the type of goods and how they are marketed. The degree of similarity of the goods should be considered in relation to the degree of similarity of the marks. According to the SCA, the target market for the products was made up of discerning consumers who were more concerned with the precise brand of watch they required, and who would be less likely to be deceived or confused by the limited similarities between the marks. The court declined to form an opinion on Apple’s contention that over the past 15 years, it had established a family of i-prefix trademarks, which would assist a consumer in better recognising its products.

(c) Riana Harvey

March: South Africa’s Supreme Court of Appeal in Koni Multinational Brands (Pty) Ltd v Beiersdorf AG dismissed the appeal filed by the appellant, a supplier of body care products. The appeal was against the judgment of the High Court which had held that by using a confusingly similar get-up to the NIVEA MEN get-up of the respondent, the appellant was liable for passing-off. The SCA agreed with the High Court and held that passing-off consists in a representation by one person that his business (or merchandise, as the case may be) is that of another, or that it is associated with that of another, and, in order to determine whether a representation amounts to a passing off, one enquires whether there is a reasonable likelihood that members of the public may be confused into believing that the business of the one is, or is connected with, that of another. Having answered this question in favour of the respondent, the appeal was dismissed with costs.

March in Kenya was about trade marks in acronyms! In Alpex Consulting Africa Limited (ACAL) & 2 others v Associates Consulting Africa Limited (Trading as ACAL Limited) & 5 others, the plaintiffs who were the registered proprietors of the trademark “ACAL” in Classes 16 and 36 sued the defendants for trade mark infringement. The defendant whose director, John Wamugunda Wanjau was a former employee of the Plaintiffs registered Associates Consulting Africa Limited (with possible abbreviation of ACAL). The plaintiffs argued that the Defendants through their director, knew of the use by the Plaintiffs of the acronym “ACAL” and that they intentionally registered the name to unfairly compete with the former employer. The Plaintiffs highlighted specific instances where the Defendants falsely represented themselves as the Plaintiffs when applying for work for the Kenya Film Commission’s Technical Proposal KFC/OT/05/2013/2014 by using the Plaintiffs’ trademark ‘ACAL' without the Plaintiffs’ authority or consent. The Plaintiffs also contended that the logos used by the Defendants infringed on their marks and get up since their registered trademark incorporated the words ‘ACAL’ and an image with the map of Africa which the Defendants had copied. The Court noted that the despite the fact that the Defendant did not have a registered trademark, its logo showed the word “ACAL” which was similar to the Plaintiff’s registered trademark i.e. written in bold blue with the map of Africa between the letter “C” and “A” and the names of the company in smaller letters beneath. On this basis, the Court held that the Defendant’s logo sufficiently resembled the Plaintiff’s registered trademark so as to be likely to deceive or cause confusion in the course of trade. On the basis of confusion and possible damage to the Plaintiffs reputation, goodwill and profits, the court granted an injunction against the defendant. However, the Court ruled that since the Defendants were incorporated before the registration of the Plaintiff’s trademarks, they were not barred from using their names. Nonetheless, the Court noted that they cannot use the likeness of the Plaintiff’s trade marks in its logos.

In May, a High Court in South Africa delivered judgment in Bliss Brands (Pty) Ltd v Advertising Regulatory Board NPC & Others, on the issue of the extent of the powers of the Advertising Regulatory Board (‘ARB’) in matters relating to trade mark and copyright laws. The ARB is the organisation established by its members (who are advertisers) to regulate the advertising industry in South Africa. The Court held that the ARB performs a public function and exercises coercive public powers through procedures such as the “ad-alert” [An ad-alert is essentially a notice to ARB members not to accept or provide advertising services to the subject of such notice unless it complies with the ARB’s ruling]. In the court’s opinion, the exercise of this public power was unconstitutional for several reasons, the key reason being that some provisions of ARB’s Code which deal with ‘exploitation of advertising goodwill’ and ‘imitation’ in advertising involve the same enquiries as courts would address in dealing with passing-off and contraventions of copyright law and trade mark law. By virtue of the South African Constitution, the court is the appropriate platform to deal with such issues. This Katpost discussed the case in fuller detail.

Also in May, the plaintiff in Puma Se v John Githenduka Macharia Mburu, applied for an injunction to restrain the defendant and his agents from importing, marketing, selling, manufacturing and dealing with any counterfeit products and infringing on the plaintiff’s registered trademarks in any manner contrary to the rights of the plaintiff in the registered PUMA trademarks. The plaintiff proved that they were the sole proprietors of the PUMA (symbol), and the PUMA logo trademarks in Kenya. The plaintiff claimed that the Defendant was engaged in the importation, distribution, sale and/or manufacture of counterfeit PUMA branded goods whose marks were so similar and deceptive as to pass off as those belonging to the plaintiff. Criminal proceedings against the defendant for counterfeiting had been previously dismissed. This created a likelihood that the defendant would continue to sell the counterfeiting materials since there was no destruction order issued. The court agreed with the plaintiff and held that they had established a prima facie that they were the registered proprietors of the marks and that the defendant infringed on the marks by selling and marketing footwear using the brand name ‘PUMA’. Further, the court noted that the plaintiff’s registered trademarks had been in existence in Kenya since 1970s and that it was a coveted brand with an established presence in the world. On this basis, the Court held that the defendant’s goods in (Kenyan) market would likely diminish the plaintiff’s goodwill. The court granted the restraining injunction in favour of the plaintiff since the balance of convenience tilted in the plaintiff. To remove the goods from the market, the court ordered the defendant to hand over the goods for destruction.

May also brought bad news for the applicants in Bata Brands Sa & another v Umoja Rubber Products Limited. Applicants applied for an injunction pending the hearing and determination of an intended appeal after a similar one was dismissed by a trial court in Kenya. The applicants alleged that the respondents were passing off its school shoes branded “shupavu” as those of theirs branded “Toughees” on account of the similarities in shape, design, features and general appearance. The trial court had noted that the applicant could not suffer any irreparable injury that could not be compensated by an award of damages. Further the balance of convenience was not in favour of the applicant since it was guilty of indolence and laches since it had waited for over 4 years to challenge the respondent’s actions.

Aggrieved, the applicants filed an appeal at the Court of Appeal seeking similar orders as at the trial court. In opposition, the respondent contended that it started producing “Shupavu” shoes in 2014 when there was no similar footwear in the world with similar trade name and started selling them in 2015. Further, the respondent argued that the features of the “Toughees” shoes by the applicant were not eligible for protection under the Industrial Property Act since the validity period of industrial designs was 15 years which had lapsed. In denying the injunction sought, the Court of Appeal noted that the applicant failed to demonstrate the extent of the damage it had suffered since the respondent started producing the shoe brand alongside its own.

Still in May, the ex parte applicant in Republic v Registrar of Trade Marks Ex parte United Millers Limited; Kaab Investments Limited (Interested party) sought leave from the High Court in Kenya to apply for judicial review orders of certiorari, prohibition and mandamus against the decision of the Registrar of Trademarks to deregister and remove from the Register of Trade Marks JAMBO MAIZE MEAL trade mark belonging to the applicant. The Applicant averred that it acquired the trade mark from the previous registered proprietor/user on 6th July 1979. It continued to renew and maintain use of the said trade mark over the period between 1979 to 2014. The Applicant claimed that the Registrar then illegally and/ or procedurally caused the said trademark and logo to be removed from the Register of Trademarks and subsequently registered in favour of Kaab Investments, the Interested Party. Specifically, the applicant claimed that it did not receive any communication or notice from the registrar prior to the removal thereby contravening its rights to fair administrative action. The Court noted that the applicant had provided evidence of the registration of its trademark and logo, its subsequent removal and registration in favour of an Interested Party by the Registrar. The court also noted that the applicant had lodged a complaint before the registrar and noted that it satisfied the threshold for grant of leave to apply for judicial review to quash the decision to remove their mark from the register. Notably the applicant had a right to be notified of the pending removal and extinction of the related rights in the trademark.

In October, a High Court in Gauteng, South Africa awarded damages in the sum of R458,742 (approximately $28,000) in favour of South African Bureau of Standards (SABS) for the infringing use of its trade mark on Vex Hygiene’s sanitizers and disinfectants at the height of the Covid-19 pandemic. The defendant in SABS v Vex Hygiene was using the SABS Approved certification mark on its sanitizers and disinfectants. Essentially, the defendant was claiming that its products were SABS approved when in fact, no such approval had been issued.