Can I trade mark a phrase that is similar to another brand?

When a trade mark (brand name, slogan or logo) has been registered, nobody else can use this trade mark, or one that is confusingly similar. If this happens, legal action may result. The Companies and Intellectual Property Commission (“CIPC”) administers the Register of Trade Marks, which is the record of all the trade marks that have been formally applied for and registered in South Africa.

PepsiCo Inc v Atlantic Industries

Atlantic Industries Is the registered proprietor of the trade marks TWIST, LEMON TWIST and DIET TWIST in relation to non-alcoholic drinks. PepsiCo applied to have these marks expunged and applied for the registration of the word mark PEPSI TWIST and of a device mark incorporating the words PEPSI TWIST. PepsiCo applied for the expungement of Atlantic’s marks on the basis that the word ‘Twist’ was not capable of distinguishing a proprietor’s goods and was purely descriptive. The Supreme Court of Appeal (“SCA”) rejected these contentions, finding that the word ‘Twist’ in relation to non-alcoholic drinks was an arbitrary non-descriptive word and that any association with non-alcoholic drinks was at most allusive or metaphorical. There was in any event overwhelming evidence that through extensive use the mark TWIST had become distinctive of Atlantic’s beverages.

Regarding PepsiCo’s application for the registration of its marks, the SCA held that the incorporation, in the proposed marks, of the sole distinctive feature of Atlantic’s marks, namely TWIST, was likely to deceive or cause confusion as to the origins of the beverages manufactured by Atlantic and PepsiCo respectively. The likelihood of deception or confusion was not avoided by inserting PEPSI before TWIST because the latter word played an independent distinctive role in the composite sign.

Conclusion

Whether or word is purely descriptive or not, is irrelevant when considering the word’s relation to a company’s brand or product. Once a phrase or word becomes associated with a product, it will be very difficult, if not impossible, to expunge and trade mark that word or a similar phrase.

References:

  • PepsiCo Inc v Atlantic Industries (983/16) [2017] ZASCA 109
  • Companies and Intellectual Property Commission | CIPC | http://www.cipc.co.za

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. Errors and omissions excepted (E&OE)

Company Slogans: How much of it is Intellectual Property?

Slogans are key elements in advertising campaigns as brand owners hope that the public will associate the slogan with their products or services and, therefore, to their brand. For this reason, the question of protection is of high importance.

What is a trade mark?

A slogan is a short phrase or a sentence that a company uses to identify itself or its products. It identifies the services or goods of one person and distinguishes it from the goods and services of another. An example would be Nike’s slogan, “Just Do It”.

  1. Once a slogan has been registered as a trade mark, nobody else can use it, or one that is confusingly similar. If this happens, legal action may result.
  2. A trade mark can only be protected as such and defended under the Trade Marks Act, 1993 (Act 194 of 1993) if it is registered. Unregistered trade marks may be defended in terms of common law. The registration procedure results in a registration certificate which has legal status, allowing the owner of the registered trade mark the exclusive right to use that mark.

CIPC administers the Register of Trade Marks which is the record of all the trade marks that have been formally applied for and registered in the Republic of South Africa.

What can be registered as a trade mark?

If you want to register a slogan, you must first consider of the slogan in question serves the purpose of distinguishing the goods/services of one trader from those of another trader.

  1. It must not be a customary, everyday phrase that is common for people to use in your field of trade.
  2. It can’t be representations of protected national emblems, such as the national flag or a depiction of a national monument, such as Table Mountain.
  3. It must not be offensive or contrary to the law or good morals or deceptive by nature or way of use.
  4. There are no earlier conflicting rights.

An example of a slogan or phrase that can’t be registered as a trade mark is “24 Hours”, since the expression is reasonably required for use by other traders. If a phrase like this was trade marked, the owner of the registration would acquire the exclusive right to use this phrase and thereby prevent all other traders from using it, which is unreasonable and therefore cannot be allowed.

References:

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. Errors and omissions excepted (E&OE)

Domain names and intellectual property

There is often confusion when it comes to registering domains names and intellectual property. The reason for this is simple – when a company needs to decide on a domain name, it generally chooses one of its own trade marks. However, it might be that someone else has already registered a domain name that is similar, or the same, as a company’s trade mark.

As a result, the issues that surface in trade mark disputes often crop up in domain name disputes too. However, the court has already recognised that trade mark principles are applicable in domain name disputes.

Who handles domain name disputes?

When domain names first appeared on the scene, disputes as to who was entitled to the registration of a particular name were handled by the courts, usually by way of trade mark infringement or passing-off proceedings.

  1. But now there are Alternative Dispute Resolution (ADR) procedures that relate to the various domain names.
  2. So, for example, disputes regarding ‘.co.za’ domain names are handled by way of the ADR procedure that was established by the Regulations passed under the Electronic Communications and Transactions Act (ECT Act) 25 of 2002.

When does a domain name have trade mark infringement?

An example of a case which deals with the issue of domain name registrations and trade mark includes kingo.co.za and kingonumbers.co.za.

  1. It was found that, even though the registrant had got in first with a domain name registration (kingonumbers), the complainant, Kingo, had stronger rights to the trade mark Kingo through use, and Kingonumbers would be seen as a natural extension of Kingo.
  2. The review court used this quote from the panel's decision: The crux of this decision is who owns “Kingo”? It is settled law that the person who has appropriated a mark for use in respect of goods or services as a trade mark, may claim to be the proprietor.

When it comes to domain names, if a name has been trade marked by someone else, then you shouldn’t try using it. It would be like registering a domain name such as nikeshoes.co.za – You would be treading on thin ice. However, if your chosen domain name has not been trade marked, then it shouldn’t be a problem, even if another company would seem to benefit from your registered domain name. For instance, registering a domain name such as greatshoes.co.za would not be a trade mark violation if “great shoes” has not be trade marked. If another shoe company wanted to use that domain name, they would have to buy it from you or find another.

Reference:

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. Errors and omissions excepted (E&OE)

 

What type of IP protection should I get?

Intellectual Property (IP) can exist in the form of an invention, brand, design or artistic creation. IP is an important asset in today’s knowledge economy and should be managed. However, it’s important to know that there are various types of IP protection available.

Types of IP protection

The Companies and Intellectual Properties Commission (CIPC) of South Africa administers the following IP domains in South Africa: trade marks, patents, designs and copyright.

Trade Marks

  • A trade mark identifies the goods or services of a trader as distinct from those of other traders.
  • The owner has the exclusive right to use, sell or license the trade mark.

Trade marks can include logos, words, letters, numbers, colours, a phrase, sound, scent, shape, picture, aspect of packaging or branding – or any combination of these. The name and slogan of a company, for example, can be trade marked.

Patents

  • A patent protects how an invention works or functions.
  • The owner has the exclusive right to use, sell or license the invention. Patents also allow the owner to stop others from manufacturing, using, copying and/or selling the device or process.

Patents include inventions, such as devices, products, processes, substances or a combination of known elements in any field of industry and agriculture, which are new or have industrial applications. A new way of enhancing people’s hearing, for example, could be patented.

Aesthetic designs & functional designs:

  • The visual appearance of a product is protected, but not the way it works.
  • Appearance that has a feature necessitated by its function.
  • The owner has the exclusive right to use, sell or license the registered design.

This category includes Industrial designs, which could include the shape of a car, for example.

Copyright

  • Automatically protected.
  • The owner has the exclusive right to use, sell or license the copyright work

Copyright would include paintings, art, literature, music, film, broadcasts and computer programs. The moment the work has been created, it is automatically protected.

Reference:

  • The Companies and Intellectual Properties Commission | CIPC

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. Errors and omissions excepted (E&OE)

Municipal debt invalid, the Constitutional Court has ruled

On 23 May 2017, the Constitutional Court heard an application for confirmation of an order of the High Court of South Africa, that declared section 118(3) of the Local Government: Municipal Systems Act, 2000, constitutionally invalid.

On 29 August, in a ruling majority written by Justice Edwin Cameron, the court found that upon transfer of a property, a new owner is not liable for old municipal debt.

Section 118 of the Municipal Systems Act

Section 118(3) explains that municipal debt on any property is a charge upon that property and enjoys preference over any mortgage bond registered against the property. However, the question was whether this means that, when a new owner buys the property, the property remains with the debts of a previous owner.

What did the court say?

The court ruled that section 118 (3) is “well capable of being interpreted”, so that the historical debt is not transferred to a new owner of the property.

“What is notable about section 118(3) is that the legislature did not require that the charge (historical debt) be either registered or noted on the register of deeds. Textually, there is no indication that the right given to municipalities has a third-party effect (to a new owner)… It (historical debt) stands alone, isolated and unsupported, without foundation or undergirding and with no express words carrying any suggestion that it is transmissible,” the court said in the judgement.

References:

  • The Constitutional Court of South Africa
  • “Concourt rules new homeowners not liable for debts of previous owners”, Ray Mahlaka, The Citizen, 29 August 2017. https://citizen.co.za/news/south-africa/1631149/concourt-rules-new-homeowners-not-liable-for-debts-of-previous-owners/
  • Jordaan and Another v City of Tshwane Metropolitan Municipality and Others; New Ventures Consulting & Services (Pty) Ltd and Others v City of Tshwane Metropolitan Municipality and Another; Livanos and Others v Ekurhuleni Metropolitan Municipality and Another; Oak Plant Rentals (Pty) Ltd and Others v Ekurhuleni Metropolitan Municipality (74195/2013; 13039/2014; 13040/2014; 19552/2015; 23826/2014) [2016] ZAGPPHC 941; [2017] 1 All SA 585 (GP); 2017 (2) SA 295 (GP) (7 November 2016)

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. Errors and omissions excepted (E&OE)

New requirements to re-instate a company or close corporation

A company or close corporation may be deregistered upon request from the company or close corporation or any other third party. A company or close corporation may also be re-instated. However, since the withdrawal of Practice Note 6 of 2008, and its replacement with Notice 08 of 2017, there are new requirements for the re-instatement.

The Practice Note is issued in terms of Regulation 4(2)(b) of the Companies Regulations, 2011, and is applicable to the re-instatement of companies and close corporations in terms of Companies Regulation 40(6) and (7).

What are the new requirements?

Since December 2016, to re-instate a company or close corporation, the re-instatement application on a form CoR40.5 must comply with the following requirements regardless of the cause or date of deregistration:

  • Certified identity copy of the applicant;
  • Certified identity copy of the owner of the customer code;
  • Multiple deed search (deed search of each of the 10 regional deeds offices);
  • Letter from the Department of Public Works, only if the multiple deed search reflects immovable property;
  • Sufficient documentary proof indicating that the company or close corporation was in business or that it had any outstanding assets or liabilities, at the time of deregistration;
  • Mandate from the applicant confirming that the customer may submit on his/her behalf.

When can a company or close corporation be re-instated?

CIPC will only consider re-instating a company or close corporation if it can provide proof that it was conducting business at the time of deregistration, or has any other economic value. Furthermore, upon the successful processing of the re-instatement application, all outstanding annual returns must be filed in order to complete the process, within 30 business days from date of the re-instatement.

Reference:

  • Companies and Intellectual Property Commission | CIPC. Practice Note 08 of 2017, Requirements for re-instatement in terms of Regulations 4(2)(b).

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. Errors and omissions excepted (E&OE)

SARS to intensify action against tax offenders

Despite the fact that SARS has upheld their philosophy of education, service, and thereafter enforcement, they have noticed an increase in taxpayers not submitting their tax returns by the stipulated deadlines, and not settling their outstanding debt with SARS. This is not limited to the current tax year but includes substantial non-compliance across previous tax years.

It is for this reason that from October 2017 SARS will intensify criminal proceedings against tax offenders. Failure to submit the return(s) within the said period could result in:

  • Administrative penalties being imposed on a monthly basis per outstanding return.
  • Criminal prosecution resulting in imprisonment or a fine for each day that such default continues.

Types of tax

SARS has reminded all taxpayers that, according to the Tax Administration Act No. 28 of 2011, it is a criminal offence not to submit a tax return for any of the tax types they are registered. These tax types are:

  • Personal Income Tax (PIT)
  • Corporate Income Tax (CIT)
  • Pay as You Earn (PAYE)
  • Value Added Tax (VAT)

It is also important to note that should any return result in a tax debt it must be paid before the relevant due date to avoid any interest for late payment and legal action. To avoid any penalties, interest, prosecutions as well as imprisonment, taxpayers are urged to rectify their compliance by submitting any outstanding returns as soon as possible. Please contact your tax advisor for assistance.

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. Errors and omissions excepted (E&OE)

The 10 steps when taking a dispute to the CCMA

If you have a dispute with your employer, you may want to ask the Commission for Conciliation, Mediation and Arbitration (“CCMA”) to conciliate or even arbitrate your dispute. A union or employer’s organisation may also initiate this action. Furthermore, you do not need the other party’s consent before taking a matter to the CCMA.

Steps for disputes at the CCMA

According to the CCMA, the steps involved in resolving a dispute include:

Step 1: In the case of an unfair dismissal dispute, you have only 30 days from the date on which the dispute arose to open a case, if the case is an unfair labour practice, you have only 90 days and, with discrimination cases, you have six months.

Step 2: If you have decided to lodge a dispute, you need to complete a CCMA case referral form (also known as LRA Form 7.11.).

Step 3: Once you have completed the form, you need to ensure that a copy is delivered to the other party and you must be able to prove that a copy was sent.

Step 4: You do not have to bring the referral form to the CCMA in person. You may also fax the form or post it. Make sure that a copy of the proof that the form had been served on the other party is also enclosed.

Step 5: The CCMA will inform both parties as to the date, time and venue of the first hearing.

Step 6: Usually the first meeting is called conciliation. Only the parties, trade union or employers’ organisation representatives (if a party to the dispute is a member) and the CCMA commissioner will attend.

Step 7: If no agreement is reached, the commissioner will issue a certificate to that effect. Depending on the nature of the dispute, the case may be referred to the CCMA for arbitration or the Labour Court as the next step.

Step 8: In order to have an arbitration hearing, you have to complete a request for arbitration form, (also known as LRA Form 7.13.). A copy must be served on the other party (same as in step 3).

Step 9: Arbitration is a more formal process and evidence, including witnesses and documents, may be necessary to prove your case. Parties may cross-examine each other and legal representation is allowed. The commissioner will make a final and binding decision, called an arbitration award, within 14 days.

Step 10: If a party does not comply with the arbitration award, it may be made an order of the Labour Court.

Reference:

  • The Commission for Conciliation, Mediation and Arbitration | CCMA | http://www.ccma.org.za/Advice/Referring-a-Dispute

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. Errors and omissions excepted (E&OE)

Medical Negligence Claims

Medical negligence refers to a negative consequence of a medical treatment that could have been avoided by the medical practitioner. The Health Professions Act 56 of 1974 outlines South African medical law and it should be consulted by any person who suspects a case of medical negligence.

What is medical negligence?

Imagine breaking your leg and requiring surgery for it to heal correctly. After being admitted for surgery, the surgeon guarantees you that it is a routine procedure and that your leg will heal perfectly. However, after the surgery, you have no feeling in your one foot. It is possible that a nerve has been damaged. If the surgeon is the primary cause of this consequence, for example he/she was careless, then it is considered as medical negligence.

It is worth noting that a medical practitioner cannot be held responsible for unforeseen complications that arose from unavoidable treatments. If complications arose from unknown sources, even though the practitioner has performed the treatment perfectly, he/she cannot be held responsible.

Any complication that arose after a treatment could be a result of negligence. If you suffer from an unusual complication that you suspect arose from medical treatment, it is advised to get a second opinion. If you are certain that the medical practitioner was negligent, you should not wait too long before you consult a medical malpractice lawyer, because your case can weaken over time; witnesses may forget what happened and documents can go missing.

How Is It decided who was negligent?

If you believe that you have suffered because of negligence by a medical practitioner, you have the right to lay a claim in court against him/her. A Judge will hear arguments from both legal representations and then decide whether or not negligence has occurred. Usually other medical practitioners are consulted to provide their expert testimony for both cases. The Judge must evaluate all the evidence and then pass judgment on the claim.

  1. In South Africa, the Judge must decide first whether or not the medical practitioner is liable, and then to what extent the patient must be compensated.
  2. In extreme instances, a medical negligence case can turn into a criminal case if it is proved that the medical practitioner is guilty of criminal conduct.

Sometimes the medical practitioner may be completely accountable, for example he/she could have performed the medical procedure incorrectly out of ignorance. It could also be decided that the company is completely responsible, because it did not provide the adequate equipment for the procedure. A Judge may decide that both parties are guilty of negligence and then hold them equally or partially responsible.

How does the claiming process work?

If you are no longer in need of medical attention, the first person you should get in touch with is your legal adviser. Then it is necessary to inform the Health Professions Council of South Africa to lodge a complaint.

Your legal adviser will request all your medical records to review the evidence so he/she can send a letter of demand to the medical practitioner. The response to this letter will determine whether or not the matter will go to trial; the practitioner may decide to rather settle the matter out of court and to meet the demands. If the matter does go to court, you may be required to testify.

If your claim is successful, the Judge may grant you compensation in an amount that is equal to what he/she considers fair; this may include the legal costs, loss of income and any other cost you incurred.

Reference:

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. Errors and omissions excepted (E&OE).

Can someone record me without my permission?

Over the past few months, we have seen videos being posted on social media of physical altercations, poor service delivery and racial slurs, but the victims of the videos and audible recordings are usually unaware that they are being recorded. The recordings are conducted without their permission and then shared. But is someone allowed to record you without being granted permission and the share those recordings?

Audio recording

Audio recording includes the recording of conversations conducted over the phone, recording someone speaking to a room full of people, and recording a direct conversation, without the other party’s permission. Recording without consent is against the law, unless

  • You are party to the communication;
  • You have written permission of one of the parties to the conversation;
  • The recording is in connection with the carrying on of business.

Direct video recording

This is the recording of a person with whom you are having a face-to-face conversation. The video taping of someone without their consent is permissible because you are party to the conversation, much like audio recordings. Recording an altercation between you and someone else, or recording an altercation at an airport is legal due to where the conversation is occurring – a public place.

Section 4 of the Regulation of Interception of Communications and Provision of Communication-Related Information Act 70 of 2002 (RICA) defines that a person is party to the conversation if they are in audible presence of the conversation. If you are in an altercation in a vicinity where other people can hear you, they are permitted to film because they are party to the altercation, therefore in direct communication with you.

Indirect video recording

Indirect communication is a much wider category, which includes data, speech and moving images. Skype conversations, although they appear to be face-to-face, are included as indirect communication because it is communication through an online telecommunications service. Thus, you would need to either be one of the parties in the engagement, or have been given consent from one of the parties to record the video/messages.

When is it illegal?

  • If the recording is through an interceptive method such as “bugging” or a “tapping” a device;
  • Hiding to spy on one of the parties for recording purposes, due to the parties being unaware of your presence;
  • When you are in no way party to the conversation. Being party to the conversation is if you are the sender, the recipient, or any person included in the communication.

Exception: RICA permits recordings carried out by law enforcement personnel in certain circumstances.

References:

  • Kevin Illes, A. (2017). Legal implications of secret recording. [online] Moneyweb. Available at: https://www.moneyweb.co.za/archive/legal-implications-of-secret-recording/ [Accessed 15 Jun. 2017].
  • Writer, S. and Writer, S. (2017). When you can – and can’t – legally record someone in South Africa. [online] Businesstech.co.za. Available at: https://businesstech.co.za/news/general/167107/__trashed-65/ [Accessed 15 Jun. 2017].

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. Errors and omissions excepted (E&OE)