South Africa: Trade mark rights: are South African Courts Pro – IP rights

South African law is a common-law system where legal statutes are interpreted by the High Court, and where applicable, by our Constitutional Court with reference to the common law. Trade mark law is no exception, deriving its authority from the Trade Marks Act 194 of 1993 and its predecessors, but heavily interpreted by our High Courts. Nowhere is this more evident than in the interpretation of new concepts in our trade mark law,
introduced by this 1993 Act which made provision for, among others:

·         The protection of well-known marks;
·         infringement by dilution;
·         infringement of similar goods; and
·         the introduction of shape trade marks.
 
The promulgation of the new act coincided with the new political dispensation in South Africa, which saw a minority whites-only government being replaced by a democratic government elected by the majority of the people.
 
The new government was naturally more socialist in its leanings, needing to upgrade the lives of millions of people who had been excluded from ownership and managerial levels of the economy.
 
One of the major innovations attempted by the new government was to make medicines more affordable to the majority of people. This was particularly urgent in light of the burgeoning AIDS epidemic and the then Health Minister attempted to exclude anti-retroviral medication from patent protection by amending the Medicines Control Act.
 
Although this particular attempt was unsuccessful, the ensuing publicity went some way to changing public policy to one of heightened awareness of the cost of medicines and the need to embrace generic medicines.
 
A Supreme Court of Appeal judgment in 2002 could be interpreted as having been influenced by the new surge in pro-generic feeling and in consequence, could be seen as an anti-rights decision. In dispute was a trade mark registration for the shape of an antibiotic tablet owned by a pharmaceutical company which had been copied and introduced into South Africa by a generic company
 
The court found the trade mark registration to be invalid on various grounds, thus paving the way for the sale of the generic substitute.
 
The court did mention, in passing, that “There is an ever-increasing tendency to seek protection in a field not designed or intended to cover the area” which might be interpreted as being an anti-rights-holder sentiment. However, the SCA was heavily influenced by a British case that went to the ECJ which found that the shape of a three-headed electric shaver did not constitute a trade mark. This tends to support the argument that the South African court was neither pro nor anti-rights.
 
As the judge who delivered the decision in the SCA recounted in a later work “[European] judgments all have persuasive force because s 10 of the [South African Trade Marks] Act is based upon the First Council Directive 89/1988 of the Council of the European Communities “(t)o approximate the laws of the Member States relating to trade marks”.
 
Other jurisdictions had already amended their IP laws to make provision for the introduction of the non-traditional trade marks and wider infringement rights prior to the 1993 South African Actit can be observed that the European Court of Justice had already been following a trend of refusing protection for shape trade marks.
 
Other new concepts introduced by the 1993 Trade Marks Act have in turn had a difficult if not ignominious passage through the South African courts.
 
The Act introduced trade mark infringement in respect of ‘similar goods’. Previously, a confusingly similar trade mark only infringed a prior registered mark if used on the goods registered in terms of that mark. The amendment contemplated the situation where use of a confusingly similar mark on goods similar to the registered goods amounts to infringement.
 
The High Courts in South Africa, like their counterpart in Europe, have shown a tendency to be conservative when interpreting ‘similar goods’, as is apparent from a few examples:
 

• In the POWER vs POWERHOUSE infringement matter, the presiding officer doubted whether a shoe and a shirt were similar goods
• Waterford Wedgwood, owners of the WATERFORD trade mark in respect of glassware failed to prevent the registration of WATERFORD STELLENBOSCH in respect of ‘wine’, (ECJ)
• In a similar vein, the Western Cape High Court found that ZONQUASDRIFT used in relation to both wine and grapes respectively will not lead to confusion 

The North Gauteng High Court dismissed an appeal by Foschini against a ruling by the registrar of trade marks allowing registration of DUE SOUTH in different classes, for education, entertainment, paper/stationery products, and a wide variety of foodstuffs. Foschini had opposed the trade mark applications on the grounds of its prior registrations for DUE SOUTH, in relation to, among others, cutlery and cooking utensils

In a judgment in 2005, the Constitutional Court dismissed an application for an interdict based on infringement by dilution. Although there was much hype (and indeed a minority judgment) around the tension between the ‘guarantee of free expression’ and the protection of intellectual property rights, infringement was dismissed because no likelihood of economic prejudice had been established.

A neutral observer could easily conclude from the above judgments that South African courts are not particularly pro-intellectual property rights in respect of trademarks and yet there have been cases where the trade mark owner has been successful, even where new law had to be made.
 
In a decision of the South African Supreme Court of Appeal (SCA), Adcock Ingram v Cipla Medpro delivered on 29 March 2012, the question of the ‘class of customer’ when deciding confusion among the public with regard to use of similar trade marks on prescription drugs, was decided.
 
Prior to this decision, our courts tended to find that while the use of two confusingly similar names on over the counter (OTC) medicines may lead to confusion, the same brands on prescribed medicines would not do so because of the intervention of a medical doctor or pharmacist who would not be confused because of the particular care that he/her is deemed to exercise. This was known as the ‘specialised user’ test.
 
The court a quo relied on the specialised user test in concluding that there was no reasonable likelihood of confusion between ZEMAX and ZETOMAX because of the intervention by doctors or pharmacists.
 
Acknowledging that in reality “patients often discuss their medication among themselves and with their doctors…. they exchange information on which product they find most efficacious… this information may then be discussed with their doctors or pharmacists when the issue of substituting a medicine for a generic or the more expensive innovator product is raised”, the SCA found the ‘specialized user’ test to be unrealistic.
 
This judgment reveals that even entrenched law can change if the evidence submitted is of a sufficiently probative nature, and leads me to conclude that, in a system of common law , the question of whether our courts are pro or anti-IP rights is simplistic and does not take into account the nuances at play in the system. Because of the wide discretion our judges enjoy to interpret the law, everything hinges on the sufficiency of evidence and the court will make a determination less on issues of pro or anti rights and more on the facts of each particular case.
 
Brian Wimpey studied law at the University of the Witwatersrand and completed his B. Proc. and post-graduate LLB in 1983. He was admitted as an attorney in 1986, and has practiced exclusively in intellectual property for 30 years.
 
Brian was elected as a Fellow of the South African Institute of Intellectual Property Law (SAIIPL) in 1991 after passing its specialist exams and was President of the South African Institute of Intellectual Property (SAIIPL) from 2009 to 2010. Since 1995, Brian has been a lecturer and examiner in respect of the group 1 trade mark exams offered by the Institute. He is currently a lecturer and examiner for the final year trade mark exams.
 
Brian is a senior adjudicator of the ADR-ZA Domain Dispute Resolution Authority. Brian’s experience comes from a range of contentious and non-contentious trade mark, copyright and related work and he has run a number of interesting litigation matters before both the registrar of trade marks and the High Court for major international clients.

Brian can be contacted on +27 71 433 1317 or by email at brianwimpey@ip-lawyer.co.za