Monthly Archives: May 2015

Marketing Rights at Sporting Events such as the Comrades Marathon

DMK-a1BWhen major sporting events are about to take place, we see an incline in instances of ambush marketing.  With the 90th Comrades Marathon about to take place on 31 May 2015, the Comrades Marathon Association (CMA) has issued a stern warning against would-be ambush marketers trying to ride on the coat tails of the prestigious event in a last minute effort to sell their products and services.  Typically ambush marketers will make use of unauthorised registered trade marks proprietary to the CMA on their products or services creating an impression that such products or services are associated with the event (where such third parties are not or have no affiliation with official sponsors of the event).  The CMA has advised that on Race Day the Route will be monitored by the SAPS to identify if any instances of ambush marketing are being engaged in, and will confiscate any illegal products.  It furthermore reserves the right to institute any legal proceedings against the guilty parties where necessary.  Legal proceedings could entail such ambush marketers being sued on the basis of trade mark infringement if they are making unauthorised use of registered trade marks such as “Comrades Marathon”, “The Ultimate Human Race” and “Amabeadibeadi” and or passing off  under the common law, which may even include a claim for damages.  The Advertising Standards Authority Code also lists certain unacceptable practises that constitute variant forms of ambush marketing and that are considered to be objectionable on such basis, and whereby monetary fines can be imposed on guilty parties.   It is possible to approach the CMA to seek permission to sell certain products and services encompassing or bearing reference to the Comrades Marathon, but time is of the essence as the starting gun-shot is about to be fired!

Ambush marketing is defined as the practice by which a rival company attempts to associate its products or services with an event that already has official sponsors.

For more information please contact:

Karen 1KAREN KITCHEN
Director
Department: Trade Mark
Tel: +27 (0)11 324 3057
Email: karenk@dmkisch.com

Author: Karen Kitchen

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

Is all fair in love & wine? The Robertson judgement.

DMK-a2BThe Supreme Court of Appeal recently handed down another interesting and decisive judgment in the case of Roodezant Ko-operatiewe Wynmakery v Robertson Winery (Pty) Ltd and the Registrar of Trade Marks (Case No. 503/2013). This case confirmed that trade marks, besides from the fact that they may consist almost solely of the name of a geographical area, can acquire distinctiveness.

In this case, Robertson Winery (Pty) Ltd (“Robertson”) applied to remove the trade mark ROBERTSON HILLS, which was registered by Roodezant Ko-operatiewe Wynmakery (“Roodezant”). Robertson claimed that this trade mark registration was one wrongly made in light of its prior trade mark registrations (all of which incorporated the mark ROBERTSON).  Robertson also alleged that it had been using and distributing wines under the ROBERTSON WINERY label trade mark for some 60 years. The Court paid particular attention to the fact that Robertson’s wines were the only ones that were ever produced under the trade mark ROBERTSON to identity the producer of the product.

The Court had to determine whether the ROBERTSON HILLS trade mark so resembles Robertson’s prior trade marks that if the competing marks are all used in relation to wine, such use would be likely to cause deception of confusion.

Roodezandt argued that the common element of the competing trade marks is the word ROBERTSON, which was the name of the town and defined production area for wine in terms of the Wine of Origin Scheme (“WO Scheme”). As such, it argued that Robertson was not entitled to claim the exclusive use of an ordinary geographical term.

The Court however disagreed with this argument and concluded that, simply because ROBERTSON was a name of a geographical area does not necessarily mean that it could not acquire distinctiveness and serve as a trade mark, in its own right.

The Court followed the decision made in the case of Groupe LFE (SA) (Pty) Ltd v Swartland Winery Ltd (467/09) [2011] ZASCA 4. In this case, SWARTLAND formed part of the Respondent’s trade mark, in addition being the name of a production area.  The Appellant used the word SWARTLAND on its label to indicate that it was a wine of origin produced in the Swartland geographical area, as it was entitled to do in terms of the WO Scheme. However, the court found that the appellant was not using the term SWARTLAND on its wine label simply to indicate a wine of Swartland origin, but was using it as a trade mark, to distinguish its wine from other traders. As such, its use constituted an infringement of the Respondent’s trade mark.

The ROBERTSON mark was used by Robertson as a trade mark. Roodezant was not suggesting that its ROBERTSON HILLS wines are produced as wines of origin in the Robertson geographical area, but it was using it exclusively as a badge of origin. The fact that Robertson is also the name of a production area under the WO Scheme is relevant only with regard to the origin of the grapes from which the wine is made. This concept is distinct from the use of trade marks as badges of origin of wine.

The Court therefore concluded that there was a likelihood of confusion and removed the ROBERTSON HILLS trade mark from the Register.

The Court also concluded that the cancellation of a trade mark is effective from the date on which the application for cancellation was brought. This brings finality to the question of whether the cancellation would date back to the date on which the trade  mark was registered (i.e. making the cancellation retrospective). The Court concluded that the retrospective effect in this regard may have consequences which may be substantially unfair, for example when a proprietor has used its trade mark for a lengthy period prior to cancellation.

It appears that all is still fair in love and wine. Producers of wine are entitled to refer to geographical areas in which the wine is produced on their wine labels. However, the use by a proprietor of a geographical area on its wine label is not, in itself, sufficient to prevent a trade mark infringement claim, or entitle one to register a trade mark which may conflict with another’s prior trade mark incorporating the same geographical name. Wine producers, when formulating new brand names for their wine, should take cognisance of prior brand names which may incorporate the same geographical terms.

For more information please contact:

Gillian Griffiths
Associate
Department: Trade Mark
Tel: +27 (0)11 324 3020
Email: gilliang@dmkisch.com

Author: Gillian Griffiths

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

How does a company’s social and economic impact affect the laws governing it?

DMK-a3BSouth African company law is complex and business owners are required to keep track of the multiple requirements that can impact on their day to day business, as failure to do so could result in your company incurring a fine of up to R1 million or ten percent of your turnover.

One of the factors that affects whether greater accountability and transparency is required of you is your company’s public interest score. The Companies Act uses a public interest score to indicate a company’s social and economic impact.  The public interest score is calculated as the sum of the following:

  1. the average number of employees of the company during a particular financial year;
  1. one point for every R1 million (or part thereof) in outstanding unsecured debt of the company held by creditors, at the financial year end;
  1. one point for every R1 million (or part thereof) in turnover during the financial year; and
  1. one point for every individual who is a shareholder or who has the right to receive or participate in any distribution in respect of a company’s

Every company must calculate its public interest score at the end of each financial year so that it will be aware of the obligations which it must comply with.

If your company has a public interest score of 350 points or more or if your company has a public interest score of 100 points or more and its annual financial statements are not prepared by an independent accounting professional; the following requirements will be applicable to you:

  1. Your company’s annual financial statements must be audited.
  1. Your company’s annual financial statements will have to be prepared within six months of the end of your company’s financial year.
  1. You will have to appoint a company secretary and an audit committee. The audit committee must be comprised of at least three members, who must all be directors of the company. The audit committee is required to appoint an auditor for the company.

If your company has a public interest score less than 100 points, or if your company has a public interest score between 100 and 350 points and its annual financial statements are prepared by an independent accounting professional, you need only have its annual financial statements independently reviewed by an independent accounting professional. The requirement of independent review does not apply to companies in which every shareholder of the company is also a director of the company.

If your company has a public interest score of more than 500 points, you must appoint a social and ethics committee to monitor the company’s activities with regard to matters relating to social and economic development. At least three directors or prescribed officers of your company must be members of the social and ethics committee.

Therefore, in order to meet the requirements for audit committees and social and ethics committees, companies with a greater social and economic impact require at least three directors, whereas companies that have a lesser social and economic impact only require a minimum of one director.

Please do not hesitate to contact our Commercial Department at Kevind@dmkisch.com or Merciaf@dmkisch.com or 011 324 3025/33 for further information or if you require our assistance in ensuring your company’s compliance with company law.

Mercia_BlogMercia Fynn
Senior Associate
Department: Commercial
Merciaf@dmkisch.com
011 324 3025/33

Author: Mercia Fynn

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

Patent before you “publish or perish”

DMK-a4BPublish or perish – the phrase which arguably dictates the sustainability and career advancement of academia. What is however often forgotten is that in the quest for publication, researchers and institutions often neglect consideration for intellectual property protection of their inventions. The phrase should accordingly be expanded to “patent before you publish or perish”.

A recent study conducted by the research organisation Trade & Industrial Policy Strategies (TIPS) suggests that a narrow emphasis on commodification of intellectual property rights seems likely to hinder knowledge sharing between researchers, innovators and cultural workers through publications or incorporation of traditional designs in national cultural products. In addition, TIPS agrees with Ncube et al. (2014) that the recent implementation of the Intellectual Property Rights from Publicly Financed Research and Development (IP-PFRD) Act of 2008 has contributed to this end by burdening researchers and institutions with administrative duties and perceived pressure to protect new knowledge.

They further suggest that the legal framework for patents in South Africa displays a weakness in that “the pressure on universities and other publicly funded researchers to obtain intellectual property rights as a precursor to commercialising knowledge could have the unintended consequence of slowing down research and making it less, not more, accessible for developmental purposes”.

If you, however, look at statistics relating to publication of academic papers by South African universities, it paints a picture of a relatively high publication rate. The 2013 report on South African Science and Technology Indicators by the National Advisory Council on Innovation indicated that 37,237 high impact journal publications occurred between 2008 and 2012. (This number was taken from the universities which make up about 88% of the total South African university publications.)

Interestingly, the document further reports that the number of high impact journal publications by South Africans increased at an average of 10% per year over the 2003 – 2012 period, representing an average growth of around 624 publications per year. This growth is much more rapid than the world average.

In this respect it is clear that the age old notion of “publish or perish” remains significant and that research in South Africa has remained active and well at least during this period, notwithstanding the implementation of the IP-PFRD Act.

Against this background it is interesting to note that according to the Companies and Intellectual Property Commission only around 600 patent applications have been filed by the aforementioned universities between 2008 and 2012. Investigation into how many of these 37,237 publications included inventions which could have been subject to patent protection would certainly be interesting. Clearly however the number of publications far outweighs the number of patent applications and it is accordingly likely that a number of potential inventions were disclosed without the prior filing of patent applications.

The writer has certainly come across a number of instances in which prior publication, whether by brief advertisement, presentation at congresses or full publication, have destroyed the novelty of possibly valuable inventions, leading to the loss of potential protection by way of patents. To quantify the prospective income that could possibly have been derived from such “patents” would certainly be even more interesting!

The debate around the value and effectiveness of the patent system aside, the fact remains that publication, duly authorised by the rightful holders of an invention, prior to filing a patent application irrevocably destroys potential patent protection – not only in South Africa, but worldwide!

The South African patent system provides a useful manner in which to reserve the right to protect potential inventions by way of a provisional patent application. The cost for preparing and filing a provisional patent application is furthermore relatively low and can be done without a substantial delay once an invention is ripe for publication. Such provisional patent application provides the inventor with a period of 12 months, from the date of filing, within which to conduct the necessary investigations into the potential of the invention in terms of both the validity and commercial prospects thereof. Should these investigations indicate that the patent application is not worthwhile pursuing further, the application may simply be abandoned.

The schematic figures below illustrate a philanthropic approach to research and development versus intellectual property protection approach. The philanthropic approach effectively results in a donation of your invention to the public and although admirable, such approach cannot generate any income and is simply not sustainable.

Guarantees of commercial success and/or valid patents are difficult to predict, but a certain guarantee is that publication without a prior patent application for such invention can never lead to any patent protection resulting in a loss of potential income.

Researchers, inventors and the like are therefore urged to patent before they publish or perish.

PHILANTHROPIC APPROACH

 

 

 

 

 

 

 

 

PROPERTY PROTECTION

 

 

 

 

 

 

For more information please contact:

Fredo Ströh
Associate
Department: Patents
fredos@dmkisch.com
011 324 3156

Author: Fredo Ströh

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

Legal responses lagging behind modern biotechnology

DMK-a5BRight now there are three companies gearing up for an epic biotechnology legal showdown. At stake is nothing less than control over what promises to be the core tool of an entire industry for the next decade; one that may be used in everything from medicine to agriculture.

The technology is CRISPR/Cas 9. An outgrowth of research on bacteria, this technology uses a bacterial protein (Cas 9) which can use short pieces of RNA (a single-stranded cousin of DNA) to guide itself to particular spots on the genome. In effect, CRISPR-based systems can be targeted with exquisite precision to where they are wanted and then used to perform a variety of tasks. CRISPR technology is so easy to use, and so good at what it did, that its use has spread like wildfire in scientific circles. Realising the commercial potential for the technology, its principal inventors have now started or joined companies determined to commercialise the technology.

Two things are certain at this point. Firstly, the ownership of CRISPR and its related technologies will take a very long time to sort out. Secondly, and perhaps more importantly, is that a research group which values its funding is not going to wait for things to settle before forging ahead with advancements to what has already been hailed as the biotechnological breakthrough of the decade. As such, this case serves to highlight a strange paradox in modern biotechnology: that advances seem to come ever more quickly while the legal and regulatory responses to them lag further and further behind.

In large part this is because of the nature of modern scientific research. It is now common for universities to demand that researchers produce inventions as well as publications. Equally, it is now much more common for researchers to work as part of large teams with members in multiple institutes. This, combined with the breakneck pressure to publish research (‘publish or perish’ having long since become standard operating procedure at research laboratories) leads almost inevitably to confusion when the time comes to determine who owns what.

In the case of CRISPR/Cas9, Feng Zhang is the first of the parties to participate in the claim. Under the auspices of the Broad Institute, Zhang obtained a very broadly-worded patent on the use of CRISPR/Cas 9 technologies in April 2014. This was subsequently followed by a flurry of other CRISPR-related applications covering aspects of the same technology. Two other researchers; Jennifer Doudna and Emmanuelle Charpentier (both of whom hail from the University of California, Berkeley) have also stepped into the fray by licensing their portions of the intellectual property, generated in groundbreaking work on CRISPR, to other companies. These companies form a tangled web: Editas (which both Zhang and Doudna helped found), Intellia Therapeutics (which has now partnered with Caribou Biosciences, a company started by Doudna), and CRISPR Therapeutics (which Charpentier co-founded). And all of them, moreover, have good cause to consider that they are the ‘real’ owners of CRISPR.

Complicating matters even further is the fact that the Broad Institute’s granted patent (with Zhang as the inventor) was obtained under the old first-to-invent laws governing U.S. patents. Also filed under the old laws is a still-pending application by the Berkeley group, with Doudna and Charpentier being listed among the inventors. Since then the U.S. has changed over to a first-to-file system under the new America Invents Act. As a consequence, the three-way fight over the rights to CRISPR will occur in a confusing legal space, with the old laws and mechanisms being applied in the context of new rules and processes. As of the time of writing, the first blow had been landed by the University of California (representing Doudna and Charpentier’s contributions), which has launched an interference application against ten of the Broad Group’s CRISPR patents.

The nature of modern biotechnological research, along with the nature of Intellectual Property law and the complicated matters of ‘who owns what’ when researchers work across institution and country boundaries, all but ensures that there will be plenty of fights like the one surrounding CRISPR in the future.

For more information please contact:
Thomas Schmidt
Candidate Attorney
Department: Patents
thomass@dmkisch.com
011 324 3031

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.