"Biscuit Breach" - The fact that biscuits are sometimes the subject of impulsive buying enhances the likelihood of deception
In a decision by the South African Supreme Court of Appeal, common law rights in the wrapping of National Brand's ("NB") biscuits were upheld.
NB had been selling its "Tennis" biscuits since 1911, and instituted an action against Blue Lion Manufacturing (Proprietary) Limited ("BL") for passing-off its "Tea Lovers" biscuits as NB's biscuits. Both biscuit wrappers had a lustrous white background and immediate and striking similarity in their "get-up," including the colors, arrangement, and letters.
On appeal by BL from a lower court decision enjoining BL from selling its "Tea Lover" biscuits, the Court found that a plaintiff in a passing off case must offer proof of its reputation and instances of actual deception or confusion. The court also found that (as to passing-off), average consumers have only a general idea of what they intend to buy, not an exact or specific idea. As to the biscuit wrappers in question, "the fact that biscuits are sometimes the subject of impulsive buying enhances the likelihood of deception." Lastly, the Court found that a manufacturer will escape liability only if it makes perfectly clear to the public that the articles which it is selling are not those of another manufacturer.
The Court therefore held that BL had not taken sufficient steps to distinguish its biscuit wrapping from that of NB, and accordingly, BL's appeal was dismissed.
OAPI - African Intellectual Property Organisation
OAPI is a regional patent system which provides protection in member states by filing a single patent application. Member states include Benin, Guinea, Guinea Bissau, Burkina Faso, Ivory Coast, Cameroon, Mali, Central African Republic, Mauritania, Chad, Niger, Congo Brazzaville, Senegal, Gabon, Togo, and Equatorial Guinea.
Registration of Tablet Shape Crumbles Under Attack
The High Court of South Africa expunged a trademark registration of the shape of pharmaceutical tablet on the ground that the shape of the tablet was non-distinctive. In the instant case, Triomed sought to cancel a tablet shape trademark in response to allegations of infringement by Beecham Group, the owner of the trademark. On the evidence, the High Court found that the Beecham tablet shape trademark was non-distinctive because other pharmaceutical manufacturers have used and continue to use a similarly-shaped tablet, and because the individual features of the tablet are functional. Accordingly, the Court concluded that the trademark was wrongly entered on the register.
Use of a Trademark
In the matter between Contrapest Holdings SA Limited and Ecolab, Inc. before the Registrar of Trade Marks, Contrapest sought to cancel Ecolab's ECOLAB trademarks on the basis of non-use for a continuous period of 5 years or longer. Ecolab relied upon evidence of use of clinical field trials and business visits to promote and market the trademark, as well as invoice, purchase, and shipping documentation. In his judgment, the Registrar quoted authority to define the meaning of bona fide use of a trademark which stated, inter alia, the trademark must be used by the proprietor with the object or intention of protecting, facilitating, and furthering its trading in such goods, and not for some other ulterior object. The Registrar accordingly found Ecolab's use bona fide, and the cancellation action by Contrapest therefore failed. The judgment of the Registrar was taken on appeal by the High Court, and upheld on the same bona fide use rationale.
Anti-counterfeiting
The counterfeiting of merchandise and products is an increasing feature of today's global economy. Until recently, the only protection against counterfeiting in South Africa was the Merchandise Marks Act of 1941, the Copyright Act of 1978, and the Trade Mark Act of 1993. However, these Acts have had limited effect as they lack effective procedures and sanctions to deter would be counterfeiters.
In order to address the limitations of the existing legislation, the Counterfeit Goods Act 37 of 1997 was adopted in South Africa. The Act is intended to enable copyright and trademark owners to take action against counterfeiters cloning or impersonating "protected" products. The Act provides mechanisms by which effective and immediate relief can be obtained, in contrast to prior anti-counterfeiting legislation in South Africa.
Ownership rights in an invention
There are many misconceptions about who owns the rights in an invention developed by an employee. More often than not, an employee's contract is silent as to this issue. In South Africa, it is important to note that the general principle that inventions developed by employees within the scope of their duties are owned by the employer, has not yet been finally approved by the South African courts. Therefore, the regulation of ownership of employee inventions should be addressed in the employee's employment contract, which an employer and employee should always be at liberty to negotiate. Further, the South African Patents Act prohibits a term in an employment contract which would allow the employer to claim to an invention made outside the scope of the employee's duties, or made by the employee more than one year after termination of the employee's contract for employment. Employers (and employees) should therefore review their standard employment contracts to ensure these issues are addressed.