Monday, 7 December 2009

Distinctive IP Issue no.26, CENTURY CITY AND THE PAPER GENERATORS

CENTURY CITY AND THE PAPER GENERATORS

Issue 26, 7 December 2009 CENTURY CITY AND THE PAPER GENERATORS

The Supreme Court of Appeal’s recent decision in the Century City case has been fairly well reported. The court held that the trade mark registrations for Century City belonging to the home owner’s association were invalid. Why? Because Century City is a geographical term and the law says that a mark must not consist exclusively of a sign or indication that may serve in trade to designate the geographical origin of the goods or services. What made this unusual is that Century City is a commercial and residential development rather than a town or suburb. Yet the scale is such - it’s referred to as a ‘city within a city’ – that the court felt that, although it may not have been a geographical term when the mark was registered in 1997, it is now. And the court held that in South Africa it’s not necessary to show that the trade mark owner was to blame for the name becoming geographical.

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.’

In the Century City case, Judge Harms, who’s often good for a quote, was incandescent about the record of 1157 pages. He had this to say:

‘Trade mark cases have developed into paper wars, in the apparent belief that the weight of papers of the respective parties determines the merits.’

And this:

‘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!


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