Wednesday, 28 October 2009

Distinctive IP: Issue 23, 28 October 2009 WHY IS ! NOT A TRADE MARK?

The wonderful thing about IP is that, no matter how long you do it, it never makes sense. A good example of this is a recent European decision refusing an application by the German fashion house with the silly name - Joop! - to register ! (yes an exclamation mark) as a trade mark for clothing.

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!

Monday, 5 October 2009

Distinctive IP: Issue no.21, A Double Header,

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.

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