Monday, 21 December 2009
Thursday, 17 December 2009
Firewater Interactive (http://www.firewater.net/) is closed from the 18th Dec 2009 to the 11th Jan 2009. Some say it’s a long holiday. I say HELL YEAH! We partied hard enough this year and we need the rest!
Monday, 14 December 2009
Monday, 7 December 2009
Issue 26, 7 December 2009
The Supreme Court of Appeal’s recent decision in the
But the most interesting part of the judgement is the sharp criticism of the way lawyers run trade mark cases, and how they allow costs to soar by filing loads of paper. A while back the Appeal Court complained bitterly about the fact that 720 pages had been filed, not to mention 57 pages of Heads of Argument, in a case that the judge contemptuously described as one brought by a company about the ‘wrapping of its coconut biscuits.’
‘Trade mark cases have developed into paper wars, in the apparent belief that the weight of papers of the respective parties determines the merits.’
‘Practitioners are paid to determine what the case is about and to make a value judgement about what is required and what not, and not only to photocopy documents. This should serve as a final warning also for counsel who tell us to read unnecessary paper.’
The problem isn’t limited to court documents of course! Look at your average cease and desist letter, which simply says ‘If you don’t stop doing what you're doing, we’ll get quite cross’ but runs to three pages. Or your average opinion, which says ‘You might have a case, but then again you might not’, which will run to ten pages or more. This ‘charge by the word’ and ‘bull$%*# baffles brains’ thinking really has to stop.
I’ve said enough!
Wednesday, 2 December 2009
Tuesday, 24 November 2009
Thursday, 5 November 2009
Wednesday, 28 October 2009
Readers who observe that wonderful convention of allowing a decent interval to elapse between receipt of Distinctive IP and its despatch to Deleted Items, know that a mark can only be registered if it’s distinctive, either inherently (think Google), or through many years of uninterrupted loss-making, sorry that should read ‘use’ (think South African Airways). In this case there was no meaningful use of ! throughout Europe, so the issue was simply whether it was inherently distinctive. Nein exclaimed His Lordship, Judge Schadenfreudeglockenspielbratwurstliebfraumilch or some such thing, because consumers won’t see ! as a sign denoting origin, but rather as a promotional message or eye-catcher.
Here’s the thing. When a trade mark consists of a word, the enquiry’s always simple - if the word isn’t inherently distinctive then it can only be registered if it has become distinctive. With some other types of marks, however, a further consideration is added – the courts say, now look here, we don’t think consumers see this thing you’re trying to register as an indicator of origin, so it’s not inherently distinctive, which means you’ll need to show us that you’ve used it for yonks, and that consumers now understand that it is a trade mark and that it’s yours.
Now I get this argument when people try to register things like the shape or colour of the product - products must of necessity have a shape and colour, so it’s the name that is seen as the trade mark. Which means that you have to prove that the shape or colour is now seen as a trade mark too. Albeit a subsidiary one - you never hear anyone saying they have a contract with the yellow-coloured cell phone company do you!
But what about logos? Isn’t the logo the purest form of brand, the true descendant of the random and often simple sign burned on livestock? Even if it is also subsidiary to the name – if you go into an Edgars and ask for a tick t-shirt you’ll get a look that’s even more vacant than the one you’ll get if you ask for Nike, and if you hit Witbank and say ‘ my good man, do you have one of those restaurants that operate under what’s known colloquially as the Golden Arches logo?’, you’ll get a look that’s even more dof than the one you’ll get if you say ‘hey boet, where’s McDonalds?’
So if the logo doesn’t illustrate the product, and it isn’t something that others in the business need to use, why should its simplicity or its accessibility (! is, of course, available on a keyboard near you) be held against it? It’s mysterious stuff this, it really is!
Sunday, 18 October 2009
Thursday, 8 October 2009
Monday, 5 October 2009
2010- Serious Lollipop Threat Averted.
A decision finally in the Metcash case. FIFA feels that Metcash’s sale of lollipops called 2010 POPS - in packaging with soccer balls for the zeros in 2010 and a South African flag – will stuff up the World Cup (some think that FIFA’s arrogance and Bafana Bafana's crapness may just do that too!). Judge Msimeke accepted FIFA's claim that Metcash is unlawfully competing (presumably FIFA sells lollipops too!), because it’s contravening section 15A of the Merchandise Marks Act. This says that it’s an offence for a non-sponsor to associate its brand with the World Cup, and thereby get publicity or promotional benefit from it (some think South Africans know by now that it’s only the MTN’s and FNB’s that are associated with the event, which is why they use the official logo!) The result was predictable. As was the fact that it took nearly 10 months for judgement to be handed down. Given that the tournament is almost upon us, that makes an appeal just about impossible.
Mean Mr. Video.
Balls of a different kind! The Appeal Court has confirmed a decision that ordered Mr. Video to hand over (or ‘deliver up’ in that weird dialect spoken by lawyers) DVDs that it had imported from the USA and offered for rental in SA. The decision also required Mr. Video to pay to the film companies that own the copyright in the films appearing on the DVDs, what in that same dialect is called ‘attorney and client costs’. If you’re lucky enough to be awarded attorney and client costs, you should recover most of what you’ve spent. It’s more likely, however, that you will be awarded what’s called ‘party and party costs’ - a phrase that translates loosely as ‘little more than bugger all’ - something that is likely to leave you feeling decidedly bipolar, with the euphoria of winning the case coming to an abrupt end with the realisation that it’s wiped you out financially!
So why all this aggro from the Men in Black? Well, they felt Mr. Video’s conduct was egregious. Bad even! The DVDs were clearly infringing copies of the films and they had obviously been acquired for unlawful purposes - Mr. Video had imported the DVDs, knowing full well that they wouldn’t work on the DVD players used in South Africa (it got around this little inconvenience by simply issuing customers with instructions on how to decode their machines so that the DVDs would play, nice!). It was also clear that Mr. Video had known that what it was doing was illegal, because it had obtained a legal opinion in advance. And, to top it all, when Mr Video was sued it persisted in defending the matter, even though its attorneys said there was no case. So, all in all, Mr. Video did a lot of things to irritate their Lordships. It’s good to see bad behaviour being punished once in a while.
Email: [email protected]
Tuesday, 29 September 2009
29 September 2009 06:31 AM
When you type in a word on a search engine you get two types of results, natural results and ads. The natural ones come up by dint of a clever algorithm, the ads because advertisers have bought that word. These words are called keywords or, in the case of Google, Adwords. There’s no limit on how many companies can buy the same keyword, nor on what words you can buy. This means that a company can buy another company’s trade mark as a keyword. And that means that when you type in a trade mark as a search term you may well end up going to sites of companies that compete with the brand owner, or even sell counterfeit products.
So does buying and selling trade mark keywords infringe trade mark rights? Many brand owners say yes, but the world’s biggest brand owner (arguably!) says no. There have been conflicting decisions and, as a result, Google sells trade mark keywords in some countries but not others. The European Court now has to decide a case involving the Louis Vuitton trade mark, which was bought as a keyword by both competitors and counterfeiters. The Advocate General (AG) has given his opinion, which will now go to the European Court for consideration.
The AG - who was at pains to point out that he was simply dealing with trade mark keyword use, and not the further use by the advertiser of the mark on its site - took Google’s side. He said this:
· When Google presents a trade mark keyword to an advertiser there is no use of the mark on the goods covered by the trade mark registration (e.g. handbags), but rather in relation to its keywords service. So the use is internal to Google.
· When Google presents the trade mark keyword to the public, there may be use on the brand owner’s goods, but there’s no confusion. Why? Because internet users are savvy enough to know that not all natural results and ads which flow from a search on a trade mark relate to the brand owner itself, and they will examine the site first before making any assessment.
· A trade mark is not a classic property right that allows total control, and this type of informative use should be allowed - to hold otherwise would be to place an unacceptable restriction on the rights of others to operate in cyberspace, e.g. those operating 2nd hand sites and product review sites.
· Google is not contributing to an infringement by the advertiser, unless it sells a keyword consisting of a trade mark followed by a word like ‘copy’ or ‘replica’.
· The advertiser buying the keyword isn’t infringing the trade mark either – it’s simply acting privately as a consumer of Google’s services.
Not only does this opinion legitimise an important source of revenue for Google, but it puts brand owners under considerable pressure to buy their own trade marks as keywords. It’s important stuff!
Tuesday, 15 September 2009
Issue 18, 15 September 2009
The Appeal Court’s recent decision that:
The Appeal Court’s recent decision that:
· the National Lotteries Board’s trade mark registration for Lotto was invalid because it was descriptive and
· the company behind Lottofun - a service that enables punters to buy Lotto tickets online, rather than queuing for them with the plebs - is not passing off its business as being associated with the National Lottery,
shows (yawn!) yet again how short-sighted it is to adopt a weak name.
Yes, you may hoodwink some dozy dude at the Trade Marks’ Office into registering your descriptive word, but there’s every chance it will be cancelled one day. And if it is, you’ll have to sue for passing off if you want to stop a competitor from using a similar name. And that’s a lottery at the best of times! Because, as the court said here, passing off protects a company from deception arising from a misrepresentation, rather than the name itself.
And there lay the problem for the National Lotteries Board - despite the fact that a couple of people signed affidavits claiming that they believed Lottofun was associated with the national lottery, the court didn’t believe them (although they didn’t come right out and say it, there’s every chance that their Lordships felt that gamblers simply can’t be trusted!). Users of Lottofun are, the court felt, quite clear on the fact that Lottofun is simply an agent that sells Lotto tickets. For one thing, the Lottofun site says so. And, for another, users of Lottofun are sophisticated (if you want to be a sophisticate, you’ll be pleased to hear that the bar isn’t set very high – according to the court you simply have to have a bank account and the ability to use a computer, you don’t need to see the absurdity in ploughing your hard-earned cash into a game offering the most outrageous odds!)
Alliance and Lotto, that’s two very clear warnings from our courts in the space of a few weeks. Hopefully, the message will start sinking in!
Monday, 14 September 2009
Friday, 11 September 2009
Tuesday, 8 September 2009
Unknown January 10, 2002
Please design and build me a house. I am not quite sure of what I need, so you should use your discretion. My house should have somewhere between two and forty-five bedrooms. Just make sure the plans are such that the bedrooms can be easily added or deleted. When you bring the blueprints to me, I will make the final decision of what I want. Also, bring me the cost breakdown for each configuration so that I can arbitrarily pick one.
Keep in mind that the house I ultimately choose must cost less than the one I am currently living in. Make sure, however, that you correct all the deficiencies that exist in my current house (the floor of my kitchen vibrates when I walk across it, and the walls don't have nearly enough insulation in them).
As you design, also keep in mind that I want to keep yearly maintenance costs as low as possible. This should mean the incorporation of extra-cost features like aluminum, vinyl, or composite siding. (If you choose not to specify aluminum, be prepared to explain your decision in detail.)
Please take care that modern design practices and the latest materials are used in construction of the house, as I want it to be a showplace for the most up-to-date ideas and methods. Be alerted, however, that kitchen should be designed to accommodate, among other things, my 1952 Gibson refrigerator.
To insure that you are building the correct house for our entire family, make certain that you contact each of our children, and also our in-laws. My mother-in-law will have very strong feelings about how the house should be designed, since she visits us at least once a year.
Make sure that you weigh all of these options carefully and come to the right decision. I, however, retain the right to overrule any choices that you make.
Please don't bother me with small details right now. Your job is to develop the overall plans for the house: Get the big picture. At this time, for example, it is not appropriate to be choosing the color of the carpet. However, keep in mind that my wife likes blue.
Also, do not worry at this time about acquiring the resources to build the house itself. Your first priority is to develop detailed plans and specifications. Once I approve these plans, however, I would expect the house to be under roof within 48 hours.
While you are designing this house specifically for me, keep in mind that sooner or later I will have to sell it to someone else. It therefore should have appeal to a wide variety of potential buyers.
Please make sure before you finalize the plans that there is a consensus of the population in my area that they like the features this house has. I advise you to run up and look at my neighbor's house that he constructed last year. We like it a great deal. It has many features that we would also like in our new home, particularly the 75-foot swimming pool. With careful engineering, I believe that you can design this into our new house without impacting the final cost.
Please prepare a complete set of blueprints. It is not necessary at this time to do the real design, since they will be used only for construction bids. Be advised, however, that you will be held accountable for any increase of construction costs as a result of later design changes.
You must be thrilled to be working on as an interesting project as this! To be able to use the latest techniques and materials and to be given such freedom in your designs is something that can't happen very often.
Contact me as soon as possible with your complete ideas and plans.
PS: My wife has just told me that she disagrees with many of the instructions I've given you in this letter. As architect, it is your responsibility to resolve these differences. I have tried in the past and have been unable to accomplish this. If you can't handle this responsibility, I will have to find another architect.
PPS: Perhaps what I need is not a house at all, but a travel trailer. Please advise me as soon as possible if this is the case.
We’ve only had our domain name dispute procedure for a short while. Which may explain the seemingly inexplicable Gardenmaster decision. The adjudicator ruled that a small cc that had used the name Gardenmaster for gardening services since 1969 (no that’s not a typo!) had to hand over a domain name registration which it had obtained in 2007 for www.gardenmaster.co.za to Masstores (Makro). A company that had started using the name Gardenmaster for a range of garden tools some 30 years later in 1999, registered the trade mark in the same year, and been irked in 2008 to find that the domain name was taken. The adjudicator had no doubt that the cc had registered the name www.gardenmaster.co.za to frustrate Masstores. So the registration was abusive.
The adjudicator was influenced by various factors. For example, the fact that the cc said it had registered the name in 2007 to ‘protect its rights’, after finding out that garden tools were being sold under the same name (apparently the right answer to the ‘why’ question is ‘so that we could start e-commerce’). The fact that the cc offered to sell the registration to Masstores for a significant amount after the retailer approached it. The fact that the cc didn’t answer written questions put to it by the adjudicator. The fact that the cc’s registration was formally in the name of an agent. And the fact that the cc hadn’t actually used the registration, in other words hadn’t established a site under the name. So it was apparently reasonable to infer that this was just a bad egg trying to frustrate Masstores from getting the registration.
Really! Here’s another possibility - on becoming aware of the fact that another company was using the name in a similar field, the cc thought hey we better make sure we can use our name for the website we will surely one day create, so let’s register it. Being unversed in these things, it used a marketing agent to do so. When Masstores finally woke up to the fact that it had failed to register an important trademark as a domain name, it said oh sherbet, someone else has it. So Masstores threw its mass around and said Gimme. And the cc thought, hey here’s a chance to make some nice money, so it tried to do a deal. And when Masstores refused to bite and instituted proceedings instead, the cc thought sod this for a lark, let’s just put our trust in the legal process (fools!).
There was no abuse here, no cyber-squatting, no taking unfair advantage of another’s rights, no registration primarily intended to frustrate another party. Just two businesses with rights to the same name. Which meant it was first come first served. But in this case the one that came second had the wherewithal to be awkward. So a different rule applied!
Email: [email protected] to be added to this weekly mail.
Friday, 4 September 2009
Thursday, 3 September 2009
Saturday, 29 August 2009
Wednesday, 26 August 2009
At the risk of over-simplifying, the law on comparative advertising goes something like this:
Trade mark law says that you can use a competitor's registered trade mark in a comparative ad provided that you don't imply that your product is associated with your competitor. This has seemingly been the case since 2007, when the Appeal Court ruled that Verimark's use of a BMW car in a TV ad for a car polish was kosher because there was no suggestion of any connection between the products (there is a possibility that our law will change following a recent European decision, but we'll have to wait and see).
Advertising law agrees, but imposes further requirements, for example the comparison made must be sustainable, and the ad must not be disparaging of the competitor.
The ASA recently dealt with a comparative ad where there was in fact no direct mention of the competitor. The ad was for Sunlight dishwashing liquid and it said that Sunlight 'washes twice as many dishes as its nearest competitor.' The ASA accepted that this was a reference to Ajax – not only is Ajax in fact Sunlight's nearest competitor, but the ad showed a bottle which looked remarkably like an Ajax bottle.*
The ASA also accepted that the claim was true (so remember which liquid to buy thrifty Scottish readers!). But it went on to find that the ad was disparaging and therefore contrary to the Code. Why? Because Sunlight dissed Ajax. Oooh! Turns out the ad was one of those deep, thought-provoking cinematographic masterpieces, so typical of this product sector - in one particularly poignant scene Sunlight lady refers to Ajax as 'that stuff', and in another pathos-filled moment Ajax chick looks a little disappointed with her choice of product. This, said the ASA, went beyond claiming a factual superiority to being disparaging.
Bit precious what! Surely a little robustness is part and parcel of advertising? What are you supposed to say - 'Your toothbrush is noticeably inferior to ours, but our respect for your product is undiminished!'
*It was the bottle that did it. In another recent ASA case involving arch rivals I & J and Sea Harvest, the ASA held that a reference by one company to Brand X was not sufficient to identify the competitor's product.
Saturday, 22 August 2009
Wednesday, 19 August 2009
I just discovered Hans's articles in the NoseWeek... buy it - great magazine!
Issue 15, 19 August 2009
AN UNWANTED ALLIANCE
Alliance Property Group’s recent failure to stop fellow property company Alliance Group from trading under the name Alliance should come as no surprise. Although it took the court a full 57 pages to do so, all it really had to say was that the name Alliance is inherently weak, there are loads of businesses out there called Alliance, and Alliance Property Group waited far too long before it tried to assert itself. So there was no way it could claim exclusivity. Not even in its own space - property (property / space, they say it’s a gift!). And just to remind you why Distinctive IP is your preferred source of IP law (and to give this some semblance of respectability), how about a short quote from the judgment, which itself comes from an earlier English judgment: ‘The plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action.’ Right!
What this case does do is reinforce what that grey-suited, grey-haired and occasionally grey-mattered attorney has been droning on about for years - you’re either distinct or extinct! Yes, I know that smooth-talking, Gap-wearing, Jack Daniels-sipping, Mini Cooper Coupe-driving ponytail from the advertising agency with the really deep name (no of course I’m not jealous!) has been telling you that a descriptive mark’s great because it tells people what you do, and it makes your initial marketing so much easier and cheaper, but you know what - you’ll forever be in an alliance with your competitors. Instead of standing out from the crowd!
Yes you may eventually get a trade mark registration when you’ve been in business for years, but even then you’ll find it difficult to enforce your rights. Consider this - our national carrier may possibly have a registration for South African Airways, but it might still struggle to stop someone else from taking to the skies as Southern Africa Airlines. My favourite local airline on the other hand, Kulula, just can’t wait for someone to try it on as Kolola. Or Mooloola! Or Luluka!
So remember boys and girls, made-up words like Kodak are good, as are dictionary words used out of context like Google for search thingies (yes I know it comes from the maths term ‘googol’, but ‘google’ does have a meaning, it means to deliver a googly, which is something you do on a cricket pitch not in a maternity ward!). Ordinary words used descriptively are poor, however, as are clichéd words like Perfection, geographical names and surnames. If that’s too much to retain, just remember this - Mortgage SA Bad, Ooba Good. The Mosabob rule.
Friday, 14 August 2009
Thursday, 13 August 2009
I was amused to find this display in the bank that had not been working for 2+ weeks.
Maybe this will inspire you to get some motivation to get involved and fix the damn thing – or just go full screen and show Barney to your clients... at those who can’t read will also enjoy laughing at your TVs!
Wednesday, 12 August 2009
Hans publishes it weekly - sign up by mailing [email protected]
Issue 15, 12 August 2009
WE DON’T DO COLOUR
It’s becoming increasingly common for companies to use the ASA as a forum for resolving what are basically trade mark disputes. And why not - the ASA Code has provisions which deal with the central issue in trade mark cases, consumer confusion. And the ASA works. And the proceedings are cheap and cheerful. And quick. (Reverse the last three sentences, and you have an accurate description of High Court proceedings).
Two recent ASA decisions, however, show that the outcome of an ASA case may not always be the same as a court case. A few months back, iBurst failed in its attempt to stop Neotel from using the colour orange in what can roughly be called the telecoms sector - in that case the ASA seemed almost appalled at the suggestion that a company can monopolise a colour. Last week, Tiger Foods - which manufactures that beverage so loved by Distinctive IP readers, King Korn sorghum beer - failed to stop a competitor from using the colour yellow. In both cases the ASA said that, although the Code does provide that a company cannot take unfair advantage of another company’s advertising goodwill or imitate its advertising, these provisions are basically aimed at protecting original intellectual or creative thought. And deciding to use a certain colour, it seems, does not require much intellect or creativity (that high-pitched scream you hear now is the sound of hundreds of extremely well-remunerated advertising gurus voicing their outrage!)
IBurst’s claim seems to have been a bit dodgy, but Tiger seems to have made out a pretty good case. Certainly the company said all the right things in its papers - it has used the colour for 45 years, no-one else in that sector used the colour until the cheeky competitor came along, the colour isn’t in any way functional or generic, many consumers of the product are illiterate and therefore very dependent on packaging, and the company enjoys a 79% market share (earth to Competition Commission, are you out there?). And, for good measure, Tiger even threw in a little bit of intention or sharp practice – the competitor apparently uses the same packaging supplier as Tiger.
Even if Tiger doesn’t have a trade mark registration for the colour, it could, methinks, have brought a fairly convincing passing off case. That’s because in a passing off case the issue would simply have been a factual one of consumer confusion, with intellect and creativity not coming into the equation at all (no that’s not a reference to the fact that the case would’ve been run by lawyers, and yes it is ironic that it’s the intellectual property law case that requires no intellect or creativity, thank you so much for your participation!)
Looks like you’re back in business, High Court judges!
Hans Muhlberg LLM MITMA
SA Attorney, UK Solicitor, UK and EU Trade Mark Attorney
Consultant to Moore Attorneys
Post: P O Box 60, The Woodlands, 2080, South Africa
Tel: + 27 (0) 83 9470 903, Fax: +27 (0) 86 616 7979 Email: [email protected]
Saturday, 8 August 2009
Tuesday, 4 August 2009
Monday, 3 August 2009
Monday, 27 July 2009
Tuesday, 30 June 2009
Friday, 5 June 2009
Ahhh... a pain we all know too well in the industry.
The next titles should be:
- "hurray up and wait"
- "I want it yesterday"
- "Just photoshop it"
PS: If anyone has one of those super-duper shelves that have an infinate amount of pre-prepared jobs of original client's work that they think we just pull their projects from... let me know... I will pay a little off for each job we do because "this is a long term commitment" we are making!
Monday, 25 May 2009
Friday, 22 May 2009
Monday, 11 May 2009
Sunday, 10 May 2009
Tuesday, 5 May 2009
Monday, 4 May 2009
I traveled home from Hong Kong and arrived yesterday morning 7am at ORT.
It was not evident in the slightest that there may have been any potential world health emergency.
Not a single customs official, immigration official or any other ORT employee / service provider seemed to be taking any preventative or screening measures for this potential epidemic. A good number of passengers disembarked wearing their own masks. The baggage arrival area (A2) is perfect viral breading ground with a mix of heat from the lack of ventilation and the build up of an uncomfortable number of people arriving from various flights and having to wait well over an hour for baggage to come off the conveyors.
In Hong Kong every official is masked and some gloved too. In fact most people who deal with the public are masked (fast food staff, information officers etc.). There are a number of health monitoring stations where they film travelers with heat / infra-red cameras and take their temperatures with thermometers. There are automatic dispensing sanitizing stations placed all over the airport, hotels, shopping centres etc. Furthermore they continuously run TV ads about personal health care and avoiding the spread of germs supported with a printed campaign.
I find it hard to believe SA is really prepared for a epidemic when we haven’t even taken the most basic preventative measures?