Afro-IP

Africa achieves a landmark outcome: WIPO’s historic new Treaty to combat biopiracy

2025-12-11T15:52:00.001+02:00

By Wend Wendland^{^[1]}

African plants, marine life and microbes have frequently been targeted by companies bioprospecting for new medicines, cosmetics and agricultural products – often without prior and informed consent, acknowledgement and benefit-sharing, a practice known as ‘biopiracy’.^{^[2]}

It was for this reason that African countries were at the tip of the spear in a decades-long struggle to introduce an important change to patent procedure that resulted finally in a new Treaty adopted by all the members of the World Intellectual Property Organization (WIPO) at a Diplomatic Conference in May last year: the WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge.

For many years, an intergovernmental committee of WIPO (known as the ‘IGC’) conducted the negotiations that led ultimately to the Treaty’s adoption.^{^[3]}

What the Treaty says

The most significant change brought about by the Treaty is that it requires patent applicants to disclose the origin or source of genetic resources and associated traditional knowledge their inventions are based on.

This new disclosure obligation will lead to greater transparency about the commercial use of a country’s biodiversity and what benefits are being created and for whom, triggering inquiries into whether national access and benefit-sharing regimes have been complied with – and, if not, this information could lead to benefit-sharing that might not otherwise have occurred. Provider countries, Indigenous Peoples and local communities will then stand to gain a greater share of the monetary and non-monetary benefits that arise from the commercialization of their resources.

In this way, the Treaty contributes to environmental justice.

Further, specific language proposed by Indigenous Peoples’s representatives resonates throughout the text, and they will play a role in the Treaty’s implementation. In this way, the Treaty contributes to social justice and procedural equity.

This new transparency requirement will also help reduce uncertainty about the validity of patents over bio-based inventions. This will lead to higher quality patents and greater trust in the patent system.

Africa’s leading role

A stand-out feature of the Treaty is that it is the first intellectual property treaty for which developing countries were the proponents. For one of the first times in the history of international intellectual property law, they were not policy-takers but policy-makers. This may be intellectual property’s first truly pro-development treaty.

Indeed, developing countries, as well as Indigenous Peoples and local communities, called for such a new patent disclosure requirement for over 25 years and they in particular have hailed its adoption.

Africa played a leading role in the long and winding journey to the Treaty. I am reminded in particular of the contributions over the years of figures like Philip Owade from Kenya who chaired the IGC from 2009 to 2011, Vivienne Katjiuongua from Namibia who chaired one of the two key negotiating tracks at the Diplomatic Conference and negotiators such as Yonah Seleti, the late Tom Suchanandan and Shumi Pango (South Africa); Pierre du Plessis (Namibia); Catherine Bunyassi Kahuria (Kenya), Chidi Oguamanam and Ruth Okediji (Nigeria); Paul Kuruk (Ghana); Amadou Tankoano (Niger), Mohamed Bakir (Algeria) and Georges-Rémi Namekong (African Union), to name only a few.

Prospects for the Treaty’s success

Africa is leading the charge too in bringing the Treaty into force.

Among the 44 countries that signed the Treaty within the one-year period allowed for signing, the majority are African.^{^[4]}

Signing the Treaty does not mean countries are bound by it, however. Countries become bound by treaties when they either ratify or accede to them.

This Treaty will come into force three months after 15 countries have either ratified or acceded to it.

So far, two countries have joined the Treaty (Malawi and Uganda).

The influence of the Treaty on the continuing negotiations in WIPO on the protection of traditional knowledge more broadly and traditional cultural expressions is at this stage unclear, yet expectations are high.

It is too soon to make predictions about the success of the Treaty – however that may be judged.

While the Treaty’s adoption last year was a momentous milestone in the evolution of the patent system, it is critical that the Treaty comes into force as soon as possible.

Countries should therefore now show their commitment to the Treaty by joining it and bringing it to life.

[1] Wend Wendland was for many years a Director of the World Intellectual Property Organization (WIPO). He is now an independent expert working at the intersection of intellectual property and global issues such as biodiversity, cultural heritage, agriculture, health and Indigenous Peoples. He is also an Adjunct Professor at the Law Faculty, University of Cape Town, South Africa. He is contactable at wend@wendwendland.com and his website is at https://wendwendland.com

[2] African Centre for Biosafety, ‘Pirating African Heritage: The Pillaging Continues’, 2009; Jay McGown ‘Out of Africa: Mysteries of Access and Benefit Sharing’ (Edmonds Institute, 2006).

[3] WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (the IGC)

[4] See https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/gratk.pdf

The author’s book The Journey to the WIPO Treaty on Genetic Resources and Associated Traditional Knowledge: Policy, Process and People (Edward Elgar, November 2025) provides an insider’s account of the colourful and eventful journey to the Treaty’s adoption from the first proposal at WIPO for a new patent disclosure requirement in 1999 to the adoption of the Treaty 25 years later. It analyses the Treaty and its negotiating history, lifting the curtain on how its adoption by consensus was achieved, identifying the key individuals involved and providing insights into how the Treaty’s ultimate success may be judged and achieved. The book is now available on the Edward Elgar Publishing website. For a limited period, get a 35% discount by using the code WEND35 at checkout.

When Logic Isn’t Logik: The SCA Puts Out the Fire (Again)

2025-12-03T09:33:00.002+02:00

South Africa’s law of passing off has had a fiery year. Hot on the heels of the Phoenix decision comes another brand-identity flare up from the Eastern Cape, this time between Fire Logic and Fire Logik. The Supreme Court of Appeal has now weighed in, and its message is simple: if you adopt a near identical name in the same industry, ignore warnings, keep confusing online identifiers alive for years, and offer little more than a shrug in response, do not expect to escape an interdict.

For those following the earlier High Court decision, the SCA’s judgment confirms the outcome while adding clarifications about reputation, bare denial strategies, and the evidentiary role of digital identifiers.

A Quick Recap: The Fire That Wouldn’t Go Out

Fire Logic, established in 1994, is a long standing Eastern and Western Cape business providing fire protection and maintenance services. It put up credible evidence of turnover (around R30m per year), advertising spend, industry accreditation, and more than 27 years of trade.

Logik Group, incorporated in 2015, traded under Fire Logik. The names were phonetically identical, visually similar, and used in the same markets. Even after a name change in 2016, Logik Group retained the domain, email address, and trading style. Confusion followed in the form of misdirected purchase orders, enquiries, and correspondence acknowledging the risk of confusion.

The High Court interdicted Logik Group’s use of Fire Logik in the Eastern and Western Cape. Logik Group appealed.

The SCA: When Logic Goes Missing

The Supreme Court of Appeal dismissed the appeal with costs and reinforced principles worth noting.

1. Reputation Need Not Be Over Proven

The SCA adopted a practical view. Twenty seven years of trade, turnover, marketing spend, and industry accreditation were sufficient. Reputation may be inferred from sales and advertising. Logik Group’s approach of denying everything was treated as an impermissible bare denial.

2. Digital Footprints Count

Despite the name change, Logik Group retained info@firelogik.co.za and www.firelogik.co.za and continued using Fire Logik in its online presence and tender submissions. The court treated these digital identifiers as part of the actionable get up.

3. Misrepresentation Was Clear

Phonetic and visual similarity, overlapping territories, prior notice, actual confusion, and acknowledgement of likely confusion all supported the finding of misrepresentation.

4. Territorial Interdicts Follow Territorial Evidence

Reputation was proven in the Eastern and Western Cape. The interdict was limited accordingly. Territoriality still matters.

Practical Lessons

For brand owners

• Include domain and email checks in name clearance.

• Implement undertakings promptly.

• Preserve evidence of confusion.

• Remember that reputation accumulates.

For litigators

• Challenge bare denials.

• Use digital evidence.

• Build the territorial record if broader relief is needed.

For defendants

Claims of attempted rebranding without evidence are unlikely to succeed. Inexpensive digital changes undermine arguments based on delay or resource constraints.

A Final Thought: When Logic Meets Logik

Passing off remains contextual. Reputation need not be exceptional. Misrepresentation need not be intentional. Damage need not be quantified. The question is whether market reality creates confusion. Here, the public was left to decide whether fire logic was logic about fire or logik about fire. That burden, the SCA held, is not lawful.

The appeal was dismissed.

When a Phoenix Rises… Twice: Passing Off in the Gauteng High Court

2025-12-02T10:29:00.001+02:00

The South African logistics sector saw an unexpected mythological cameo last week when the High Court (Johannesburg) handed down judgment in Phoenix International Logistics (Pty) Ltd v Blaque Cherry Logistics (Pty) Ltd t/a Phoenix Logistics SA. In this case one logistics business accused another of rising a little too closely from its own brand ashes. (Case link to follow as soon as it is on Saflii).

What followed was a neat illustration of passing-off principles, a reminder that even everyday words can become distinctive in the right commercial nest, and a warning that a rebrand is not a resurrection unless your public-facing footprints are properly swept away.

The Background: When Two Phoenixes Occupy One Perch

Phoenix International Logistics has been trading under its name since 2005 which is a substantial uninterrupted nineteen-year run in a notoriously relationship-driven industry. The respondent, Blaque Cherry Logistics, later began trading as “Phoenix Logistics,” prompting the applicant’s November 2023 cease-and-desist. The respondent’s attorneys initially folded almost instantly, undertaking to “immediately refrain” from using the name.

But instead of a clean break, the respondent rebranded to “Phoenix Group SA” which is a move that may have sounded different internally, but, as the Court later explained, looked very much like the same bird to the average consumer.

Then, in 2025, nearly two years after the undertaking, the applicant discovered:

• A SARS cargo carriers list still identifying the respondent as t/a Phoenix Logistics

• A professional profile of the respondent’s sole director reflecting Phoenix Logistics

• The respondent’s website trading as Phoenix Group SA

This sparked a supplementary affidavit, objections, counter‑objections, accusations of tactical manoeuvring, and a “complex factual substratum.”

Procedural Sparks: The Court Lets the Evidence In

The respondent attacked the applicant’s supplementary filing as a late-stage rescue attempt. It also cried non‑joinder, complained about a confirmatory affidavit dated before the founding affidavit, and challenged the authenticity of the SARS listing.

The Court allowed the supplementary evidence regardless, emphasising that it was recent, relevant to ongoing conduct, and caused no prejudice because the respondent had fully answered it.

The Legal Core: What Makes a Phoenix Your Phoenix?

South African passing‑off law requires:

1. A reputation at the time the respondent entered the market

2. A misrepresentation likely to deceive

3. A likelihood of harm

The Court found all three comfortably established.

Reputation? Yes — 19 Years of It

The respondent never seriously disputed that the applicant had goodwill in “Phoenix International Logistics.” The judge noted that, while “Phoenix” is a common word, it served as the distinctive identifier in combination with “International Logistics.” The Court stressed that this did not create a monopoly over “Phoenix” in all trade, only within logistics.

Misrepresentation? The Dominant Element Carries the Day

The Court held that:

• “Phoenix” is the dominant, memorable element of both names

• “Group SA” and “International Logistics” are generic descriptors

• Both operate in the same field

A consumer might assume affiliation, a division, or a rebrand, all classic passing‑off risks.

Residual Confusion: The SARS Listing Becomes the Smoking Feather

The SARS entry dated October 2025, showing t/a Phoenix Logistics, became decisive. It contradicted the respondent’s assertion that all confusion had been cured by January 2024. Combined with the director’s professional profile still referencing Phoenix Logistics, the Court found clear evidence of continuing misrepresentation.

Order: This Phoenix Must Find a New Nest

The Court granted a final interdict prohibiting the respondent from using:

• “Phoenix Logistics”

• any name incorporating “Phoenix” that is confusingly similar in the logistics sector

It also ordered the respondent to update SARS and all registries within 30 days and awarded costs including two counsel.

Critical Eye: What Does This Judgment Mean?

• The Court did not grant a word monopoly, only sector‑specific protection

• The SARS and online evidence showed current, not historical, misrepresentation

• The Court based its reasoning on likely confusion, not mere association

• The initial undertaking supported the applicant’s reputation in context

• Common-word arguments fail where long use creates distinctiveness in a field

Afro‑IP Takeaways

1. A mythical bird can become a trade identifier.

2. A rebrand must be thorough, not cosmetic.

3. Courts favour updated evidence in ongoing passing‑off disputes.

4. Sector context matters more than company register statistics.

5. Perception rules: consumers rely on imperfect recollection; businesses must rely on perfect name hygiene.

King V and the Future of Intellectual Property in an AI Driven Africa

2025-11-03T13:50:00.010+02:00

When Governance Meets the Algorithm

King V has landed and this time, it doesn’t tiptoe around technology. I attended the Institute of Directors South Africa’s premiere launch on Friday and am pleased to report that the new corporate governance code from Africa puts AI and data at the centre of ethical leadership.

This is a signal that intellectual property and information governance now live under the same roof. In other words, how we create, protect and share ideas, from patents and trade secrets to training data and algorithms, is now a boardroom issue (as it should be), not just a legal one.

From Ownership to Stewardship

King V reframes the conversation. It treats “data, information and technology” as distinct but connected fields, and insists that boards take responsibility for all three. AI gets its own treatment: boards must establish accountability for the design, use and outcomes of AI systems, guided by values like fairness, transparency, privacy, explainability and human-centricity.

This is governance and IP language. If AI systems are built on data (and most are), then those data are intellectual assets. Their ownership, control and ethical use are as important as any patent or trade mark. Indeed, most exist as copyrights and know-how, creating an urgent need for registers to reflect this.

The shift from ownership to stewardship is subtle but seismic. Organisations are now judged not only by what IP they hold (which, from an African perspective, has always been neglected), but by how responsibly they manage and share it.

The New Currency: Intangible, Intelligent, Invisible

King V recognises what African innovators have known for years: the real wealth isn’t in the factory, it’s in the file.

Algorithms, data sets, local knowledge systems, creative works are now the levers of sustainable value creation.

Under King V, boards are told to link their strategies to the “vitality of socio-ecological systems.” In plainer terms: your business doesn’t exist outside the society and environment that sustain it. That means IP portfolios can’t be hoarded in isolation. They must contribute to broader resilience, climate, education, digital inclusion.

It’s a governance model that works like Ubuntu for IP: we create because we exist.

AI, IP and the Duty to Disclose

Another quiet revolution involves the concept of double materiality. Companies must now report both how sustainability and technology issues affect them and how their activities affect society. For IP teams, this invites new questions:

How do our licensing and enforcement policies impact access to innovation?
Are our data practices sufficiently fair and transparent?
Does our AI deployment erode or enhance public trust?

Expect this to spill into integrated reporting and assurance. Auditors will soon be asking not only how many patents you have, but what those patents do to people and the planet.

Boards, Committees and the IP Connection

King V also re-wires governance structures. Risk committees must include independent members and so must social and ethics committees. For IP intensive organisations, this can be quite something:

Risk committees should map and record IP exposure and ownership, from trade secret leaks to algorithmic bias.
Social and ethics committees should oversee how IP is used in society, whether your AI respects human rights, diversity and access.
Remuneration committees should rethink incentives by rewarding innovation that’s not only profitable but responsible.

It’s governance with conscience.

What This Means for African IP Practice

For Africa’s IP community, King V is both an opportunity and a challenge. It demands that lawyers, IP professionals and policymakers rethink IP as governance infrastructure. That’s a big shift from drafting agreements or filing applications. It’s about aligning IP strategy with ethics, AI governance, value and sustainability.

It also puts pressure on boards to include IP literate voices i.e. people who understand how data rights, algorithms and copyright intersect. If that doesn’t happen, companies’ risk being led by directors who can read a balance sheet but cannot read the value of intangibles. This is especially a challenge in South Africa, where internally generated IP does not even exist on the balance sheet and therefore long awaited.

So, What Now?

A few practical take outs for IP leaders:

Put AI and data IP on your board’s risk register.
Build IP ethics into your social and ethics committee mandate.
Train directors on AI-related IP risk authorship, bias, accountability.
Rethink disclosure: create IP asset registers - report how your IP both creates and impacts value.
And perhaps most importantly, design IP policies (including enforcement policies) that reflect Ubuntu, not just exclusivity.

Final Thought

King V is very much welcomed as it indirectly positions intellectual property at the forefront of governance in the AI age. This is something that accounting standards on value have failed to do. AI inputs and outputs are all about data which includes intellectual property rights. It is not just about recording these assets in registers, it is also about leading with ethics and transparency, not because regulators demand it, but because trust is now the most valuable form of intellectual property we own. This is very much an opportunity for all those that believe in the value of IP.

Darren Olivier

Spotlight: LES SA Annual Conference 2025 – Where Innovation, Licensing & Sustainability Meet!

2025-09-09T16:00:00.001+02:00

The Licensing Executives Society (LES) South Africa is rolling out the blue carpet for its Annual Conference, set against the stunning backdrop of the Asara Boutique Hotel & Wine Estate in Stellenbosch from 9–11 November 2025.

Why Should You Be There?

Innovation, Sustainability & Licensing in a Changing World is the theme, and the line-up is nothing short of world-class. Expect to rub shoulders with global IP leaders, trailblazing entrepreneurs, and the sharpest legal minds in the business.
Network, learn, and shape the future of African and global IP. Whether you’re a seasoned practitioner, a startup founder, or a policy enthusiast, this is your chance to connect and collaborate.

What’s On the Agenda?

Welcome Evening (9 Nov): Kick off with a relaxed cocktail reception, live music, and a chance to meet LES SA members, international guests, and speakers.
Day 1 (10 Nov):

Keynote on global IP & licensing trends by JC Troussel (President, LES International).
Panels on green economy licensing, data licensing, and women in innovation.
Workshop on Licensing Disputes with a powerhouse panel.
Wine tasting and networking hour hosted by Asara Wine Estate.

Day 2 (11 Nov):

Fireside chat on AI & data licensing.
Talks on startup licensing strategies, rugby brand building, and cross-border opportunities (featuring Afro-IP's very own Darren Olivier!).
Closing plenary on innovation, ESG, and the licensing agenda.
Optional vineyard tour and farewell drinks.

Registration & Details

Fees: R2,500 (members) | R5,000 (non-members)
Register now: https://forms.gle/75hbSUvP4rHy49wb9
Full programme: https://licensing.co.za/annual-conference-2/
Conference hotel: Asara Boutique Hotel (special rates with code LES091125). Alternative accommodation options available.
Sponsorships: Platinum, Gold, Silver, and Bronze packages: show your support for African IP excellence!

SOUTH AFRICA: Detaining counterfeit goods: Finding time to do the job

2025-09-04T13:15:00.002+02:00

The decision in LA Group v United States Polo Association (USPA) Gauteng High Court, Pretoria, dated 25 August 2025, is, in the words of the court "complex". For one, one party employed two senior counsel. Also, procedurally, the matter involved a decision by a single judge, an appeal to a full bench, and yet a further appeal to a full bench, not the Supreme Court of Appeal. The dispute originated with the detention of allegedly counterfeit hand bags and luggage of USPA. The latter applied successfully to a single judge court (the court a quo) for an order releasing the consignment concerned.

LA Group applied for leave to appeal. In response, USPA applied to the court a quo in terms of section 18 of the Superior Courts Act for leave to execute the court a quo's decision. Section 18(1) of said Act provides that an appeal will suspend a decision - but the court may order otherwise. LA Group's application for leave to appeal was refused, and USPA's application for leave to execute the court a quo's decision was granted. In these circumstances, section 18(4)(ii) of said Act creates an automatic right of (expedited) appeal to the next highest court. On appeal to it, a full bench (the first full bench - FFB) set aside the decision granting leave to execute the court a quo's decision.

That left unresolved the merits of the court a quo's decision, hence necessitating a second full bench (SFB) appeal, being the case under discussion here. The latter court indicated that at the heart of the appeal was the legal question whether it was competent for the court a quo to order the release of the imported goods in circumstances where the goods had been detained under the Customs and Excise Act. The same question that confronted the FFB.

The Customs and Excise Act authorises the police to detain goods for the purpose of establishing whether the goods are liable to forfeiture thereunder. LA Group argued that the application in the court a quo was premature because a party is only entitled to demand the release of goods which have been seized. The distinction between goods that have been detained and those that have been seized was said to determine the scope and nature of the relief that may be claimed by a person seeking their return. USPA on the other hand submitted that the police inspected the container carrying the imported goods and that, consequently, at the time that the application was brought the official had finished her investigation. With the conclusion of the investigation, the continued detention was no longer justified and the imported goods had to be released. USPA also referred to the decision in Commissioner for the South African Revenue Service v Trend Finance (Pty) Ltd, which stated that in terms of detention, a limitation must be read in that the right to detain goods only endures for a reasonable period of time. The SFB however held (paragraph 25) that USPA did not establish that a reasonable period of time had passed.

The SFB further stated that there was nothing on the papers to indicate that when the application was launched that the police had completed an investigation into whether there were reasonable grounds to suspect that an offence in terms of the Counterfeit Goods Act was committed.

The SFB then had regard to the following passage (paragraph 30) of the ruling of the FFB:

"A distinction (which was overlooked by the court a quo) must therefore be drawn between the 'detention' and the 'seizure' of goods. Goods may only be 'seized' after the inspector has investigated the matter and has exercised a discretion that she reasonably suspects that the detained goods may be counterfeit and only after she has applied for a warrant in order to 'seize' the goods in terms of the Counterfeit Goods Act.”

The SFB thus held that the application was prematurely launched and that the court a quo usurped the discretion of the officials in terms of the Customs and Excise Act. It was accordingly not competent for the court a quo to have ordered the release of the imported goods.

The case establishes that a party is only entitled to demand the release of goods that have been "seized". It also indicates that the courts will provide the relevant officials with sufficient time to determine the status of possible counterfeit goods. However, the time period must be reasonable.

Prof Wim Alberts (University of Johannesburg)

SOUTH AFRICA: Aspen secures urgent relief in MYBUCOD vs LENBUCOD dispute

2025-08-20T07:52:00.002+02:00

Hey herd, Afro-Buff here, fresh from the gym and flexing through another heavyweight IP bout delivered this week by the Pretoria High Court. This time it’s Aspen vs Adcock, and trust me, the legal bench press was heavy.

Aspen, armed with its registered MYBUCOD mark (class 5, pharmaceuticals), took on Adcock’s use of the lookalike LENBUCOD. Back in May 2025, the Court benched Adcock with an interdict stopping LENBUCOD sales, ordering up destruction of packaging, and awarding Aspen its costs.

But Adcock wasn’t ready to tap out. They filed an appeal, hoping to stall enforcement. Aspen countered with a section 18(3) Superior Courts Act application, basically asking the Court: “Don’t just give us the win, let us enforce it now, even while Adcock appeals.”

Justice Millar agreed, delivering some serious legal gains for Aspen:

Exceptional circumstances: If Aspen had to wait until a likely late 2026 appeal, its victory would become a “vacuous gesture.” Trade Mark rights aren’t just for show and meant to protect in real time.

Irreparable harm to Aspen: In just six months, Adcock had pumped R8.4m (around USD500k) worth of LENBUCOD product into the market. Left unchecked, that level of trading would decimate MYBUCOD’s commercial value.

No irreparable harm to Adcock: Adcock knew MYBUCOD was registered and disputed but carried on anyway. If they eventually win on appeal, Aspen has promised to pay damages to repair any harm caused, like a physio on a torn muscle. The court also found that market re-entry was quite possible for Adcock (in the event of a successful appeal).

The Court also shut down Adcock’s argument that MYBUCOD was too small to matter: registration alone gives substantive rights, whether or not the brand is a market champion.

Why it matters (Afro-Buff’s take)

This case is a reminder that:

1. Registered rights are muscle, not fluff. You don’t need market bulk to enforce them.

2. Section 18(3) works, like a fast track protein shake keeping your rights strong while opponents try to run down the clock with appeals.

For brand rights owners, the message is clear: when an infringer tries to out-lift you by flooding the market during appeal delays, the law gives you the tools to keep your rights flexed and functional. Another reason to protect those trade marks by registering them!

Order: Aspen’s May 2025 interdict stays in force. Adcock pays costs (including two counsel).

Full judgment: AspenPharmacare Holdings Group and Another v Adcock Ingram Healthcare (Pty) Ltd andOthers (Gauteng High Court, Pretoria, Case No. 017055/2025, 18 August 2025)

Respecting the Lens: Protecting Africa’s Photographic Legacy

2025-08-12T16:26:00.002+02:00

In a world where images can be downloaded, reposted, and circulated globally in seconds, the artistry and rights of photographers are too often overlooked. Behind every image lies the vision, effort, and lived experience of its creator. When these works are used without permission, they are not just stolen they are stripped of their context, meaning, and economic value.

A Legacy in Focus: Sam Nzima and the Hector Pieterson Photograph

Few photographs are as iconic, or as powerful, as the image Sam Nzima took of 12-year-old Hector Pieterson during the Soweto Uprising of 1976. It is a photograph that moved the world, exposing the brutality of apartheid and galvanising international opposition.

But Nzima’s journey with that image was not only about history, it was also about ownership. For decades, he fought for recognition and control over the use of his photograph. Without his permission, it was reproduced in countless publications, sometimes stripped of his name, sometimes used in ways that diluted its meaning. His struggle was a reminder that even legendary works by African creators are vulnerable to misuse, particularly abroad.

Protecting this image is not about locking it away. It’s about ensuring it is treated with dignity, that it continues to tell the story it was meant to tell, and that Nzima’s legacy inspires future generations of photographers to use their craft to record history and to insist on the respect and rights they deserve.

The Law Is on the Side of the Creator

In South Africa, photographs are protected as artistic works from the moment they are created. The author, the photographer, holds the copyright unless it has been assigned or falls under specific exceptions in the Copyright Act.

Using a photograph without permission, whether intentionally or not, constitutes infringement. That means reproducing it in a book, posting it on a website, or even using it in a marketing campaign without the creator’s consent is unlawful.

The remedies can include damages, royalties, and court orders to stop further misuse. But beyond legal enforcement lies a moral responsibility: to honour the labour and creativity of the person behind the lens.

Why This Matters for African Creators

African photographers often face two hurdles:

Visibility without control – Their work travels globally but is monetised by others.
Lack of enforcement resources – Many cannot afford the time or expense of pursuing infringement abroad.

The result is a one-way flow of value, African creativity enriching others while its originators are sidelined.

Respecting copyright is not simply a matter of compliance. It’s about cultural integrity. Every unauthorised use erodes the link between an image and its creator, and chips away at the ability of future Sam Nzimas to make a living from their craft.

A Call to Action

If you use photographs, especially those telling Africa’s stories, ask permission. Credit the creator. Pay for the licence. If you are a photographer, know your rights and assert them. The stories you capture are part of our shared history, and your name and livelihood deserve to be tied to them.

Sam Nzima’s lens brought a defining moment of South African history into focus. Let us ensure that future generations of African photographers can do the same, confident that their work will be respected, their rights upheld, and their legacy protected.

TRAVELWINGS Wins: Why “WINGS” can't fly solo

2025-08-06T13:11:00.002+02:00

The Johannesburg High Court has handed down a sharply worded ruling in Wings Travel Management(Pty) Ltd v Satguru Travels (Pty) Ltd t/a Travelwings which is a bit of a reality check for trade mark owners banking on common English words.

WTM claimed that Satguru’s use of “Travelwings” infringed its WINGS trade marks and amounted to passing off. The Court disagreed, clipping their "wings" on all claims.

For the case headnote crowd, we’ve unpacked the full legal breakdown here on the Adams & Adams website.

But for the real takeaways, stick with us.

You Don’t Own the Dictionary

WTM wanted to treat “WINGS” like proprietary turf. The Court wasn’t having it.

Yes, WTM has registered marks. But “wings” is a common term used by travel agents, airlines, even chicken eateries. Unless it’s distinctive and used in the right way and in the right class, you don’t get exclusive airspace.

TRAVELWINGS ≠ WINGS

WTM’s argument hinged on TRAVELWINGS being "too close" to WINGS. The Court didn’t agree.

“Travel” isn’t just fluff, it changes the meaning and perception. When you look at the marks holistically (as the law requires), they’re different: in sound, in concept, in look.

Context Is Everything

This wasn’t a peanut butter trade mark case. It’s about digital consumers buying travel services. These are people who:

are literate,
use online tools,
compare options.

They’re not confused by TRAVELWINGS i.e. they know what they’re clicking.

No Reputation? No Passing Off.

To prove passing off, you need to show that:

you have a reputation; and
someone is misappropriating it.

WTM didn’t show that it, as opposed to a group company, actually owned the relevant goodwill. That gap was fatal. No misrepresentation, no confusion, no damage.

The Bigger Picture

This ruling is a warning for rights holders everywhere: don’t overreach and ensure your goodwill is in the right place.

Registering a trade mark doesn’t mean you can chase down everything that vaguely resembles it. If your brand is built on common words, your enforcement strategy needs:

nuance,
strong factual evidence, and
clear proof of consumer confusion.

Otherwise, your claim won’t fly. From a governance perspective, the need for a well thought out intra-group licensing strategy is very important. Click here for the court decision.

by: Darren Olivier, Maureen Kiugu (nee Makoko), Alisha Muller

The authors represented Satguru Travels (Travelwings) in this matter. At the time of writing, it’s not known whether Wings Travel Management intends to appeal.

SOUTH AFRICA: AI IP License Back Arrangements and Exchange Control

2025-07-25T05:45:00.002+02:00

Regulation 10(1)(c) of the Exchange Control Regulations (and CEMAD Circulars) prohibits the export of any right to capital, including intellectual property and related licenses (exclusive and non-exclusive), without prior SARB approval. This applies even where such rights are embedded in standard terms and conditions, such as those commonly found in AI platform agreements. Typical clauses read:

“You may provide input to the Services (‘Input’) and receive output (‘Output’). OpenAI may use Content to provide and maintain the Services, comply with applicable law, and enforce our policies. You grant OpenAI a license to use Content as necessary.”

“You own the assets you create with the Services, but you grant Midjourney a non-exclusive, worldwide, royalty-free license to use, copy, modify, and distribute them for any purpose.”

As AI usage becomes entrenched in everyday life, it would be impractical, to the point of point of being absurd, to obtain approval for every usage of an AI system. However, this does not mean that the obligation should be ignored, quite the contrary.

What SARB is really interested in

The South African Reserve Bank (SARB) enforcement focus is typically directed at transactions involving material or recurring commercial value; strategic or core IP assets; exclusive or perpetual rights; or a transfer or waiver of rights central to a South African business's operations or value chain.

In practical terms, SARB is unlikely to scrutinise casual, low-value use of offshore AI systems by individual users. But enterprises using AI platforms to create high-value content or inventions, especially when such output is subject to broad license-back clauses, face a tangible regulatory risk.

Accordingly, South African users should assess the materiality of the AI output, the breadth of rights licensed back, and the commercial use of such content, and seek professional exchange control advice where the output forms a meaningful part of the business model, IP portfolio, or revenue base.

Scenario-Based Risk Flags for Exchange Control Advice

• A consultancy uses an AI System to generate high-value client deliverables and the platform’s terms include perpetual reuse rights to the AI provider.

• A creative agency uses an AI System to produce visual assets or branding elements for commercial use, licensed back to the offshore provider.

• A software company integrates AI System APIs into a product that uses user prompts to generate exportable code or documentation.

• The AI output is incorporated into patented inventions or copyrighted works later commercialised abroad.

• The IP created is central to the company's valuation, e.g., start-ups relying on AI-assisted invention or branding.

Lower Risk Scenarios (But Not Risk-Free)

• A sole trader or freelancer casually uses AI platforms for idea generation or illustration, with no significant commercial dependency on the output.

• The use is incidental or internal, with no redistribution or monetisation of the content.

• The output is ephemeral, non-strategic, and doesn’t result in a substantive economic right being granted to the offshore AI platform.

Practical Steps

Assess the nature of your AI use: Is the AI output strategic or high-value? Does the license-back clause involve perpetual or commercial rights? Will the content be monetised, distributed, or incorporated into exported IP?

Where the answer to any of these is yes or you have doubt, exchange control advice is both prudent and legally necessary.

Note: It is the South African user, not the AI provider, who bears the legal risk of non-compliance with exchange control regulations. Failing to obtain SARB approval may render the contract invalid (which could result in the loss of the IP assets) and result in penalties.

Darren Olivier

AI and Autopilots: Why Good Lawyers (and Pilots) Still Hand Fly

2025-07-09T11:05:00.002+02:00

In the hangar of innovation, a quiet revolution is underway. Light aircraft pilots are letting go of the yoke. Lawyers are letting go of the keyboard. Autopilots and AI are doing the flying – and drafting. But before you hang up your headset or your robes, here's why knowing how to fly (or draft) the old way still matters (a lot), especially if you're doing it over Africa.

The New Co-Pilot in the Sky: Autopilot

Let’s start 5,000 feet up. Modern light aircraft, from Cirruses to Slings, now come equipped with autopilots sophisticated enough to follow flight plans, hold altitudes, and even shoot GPS approaches in bad weather. But here's the thing: no matter how clever the box is, the human pilot must still know how to fly manually and be current and adept at it.

Why? Because tech fails. Power goes out. Systems get confused. Terrain gets close. Weather throws tantrums. It’s at these moments, when the autopilot disengages that the aircraft buffets and the passenger turns green when pilots earn their wings.

Hand-flying is not obsolete. It’s foundational. And it keeps the pilot sharp even when the autopilot works flawlessly, like the muscle memory of pulling back at rotation speed or trimming out on climb. The function of the autopilot is to create a safer, better pilot because it enables him or her to focus on other things like weather, engine performance and importantly, decision-making.

Enter the Lawyer’s AI Autopilot

Swap propellers for pleadings, and you’ll find that the same is true for the modern lawyer. Tools like ChatGPT, Harvey AI, Copilot (love the name), Luminance and their ilk are doing everything from reviewing contracts to drafting court documents. They're faster than juniors, don’t need lunch breaks, and can “work” in 100 jurisdictions at once. But much like autopilot, they aren’t the pilot.

You still need a lawyer who understands the client’s goals, the court’s quirks, and the broader context. AI can spot precedent but doesn’t know the judge’s mood or the client’s unspoken fear. It can’t yet navigate the nuance of African customary law or the dance of cross-border enforcement on the continent. Like flying, the lawyer still needs to know how to fly manually, be current at it and adept.

AI enables the lawyer to focus on client needs, people management and importantly, decision making.

Embrace the Autopilot – But Keep Your Hands Ready

Here’s the kicker: we should embrace both. Autopilot has made flying safer and more accessible. More people can fly further, more reliably, with better outcomes. AI promises the same for law, access to justice, faster resolution, lower costs, better decision-making.

In Africa, this is not just a convenience, it’s a strategic leap. We’re often not burdened by legacy systems, and that means we can jump straight to the future. Just like we leapfrogged landlines with mobile phones, we can leapfrog outdated, expensive legal systems and empower courts, firms, and clients through AI.

Imagine rural entrepreneurs getting legal advice in their language, instantly. Imagine overburdened courts speeding up decisions through automated summarisation. Imagine firms in Lagos or Lusaka with global reach using tech that was once only available to magic circle firms.

The African Edge: Smart Leapfrogging

But only if we fly right. That means training our lawyers to use AI well and to think critically. Just as pilots must learn both autopilot and stick-and-rudder flying, lawyers must master both AI tools and legal fundamentals. It's not enough to press buttons. You need to know when the AI is wrong, and how to correct it.

And here’s a sceptic’s objection worth airing: Isn’t AI just another shiny toy for big firms? Not if we embed it wisely. With open models, mobile-first strategies, and localised training, AI can be Africa’s legal co-pilot, a force multiplier, not a margin eater or job taker.

Final Approach: Tech Makes Us Better, If We Let It

So what’s the takeaway?

Whether you’re climbing through turbulence over the Karoo or navigating a cross-border licensing dispute, tech isn’t replacing you, it’s making you better. But only if you keep your hands on the yoke. Lawyers and pilots must know when to switch off the autopilot and take control.

In both professions, judgment matters. Skill matters. Context matters. The best practitioners are those who use their tools but are never ruled by them.

African lawyers and pilots can compete and beat the best in the world, not despite our challenges, but because we embraced innovation early, ethically, and fearlessly.

Now, please stow your tray tables and prepare for landing. The future is on final approach.

Darren Olivier (lawyer by day, pilot by weekend commuting sustainably)

Image cred: By https://adoption.microsoft.com/copilot/, Fair use, https://en.wikipedia.org/w/index.php?curid=79572712

SOUTH AFRICA: THE "REAL" OWNER OF A TRADE MARK TRIUMPHS: BUT WHO WILL HAVE THE LAST LAUGH?

2025-07-08T15:12:00.001+02:00

The Supreme Court of Appeal decision in Barel v Popular Trading, perhaps not surprisingly, involved a split outcome. Not surprisingly, as the two judgments each embraced, with respect, two laudable and eminently rational yet competing approaches. On the one hand, the view that a registered trade mark proprietor should be protected, and, on the other hand, that the "real" proprietor of a trade mark, the originator, should be protected.

The facts, briefly, were that the ENRICO COVERI (EC) trade mark was the name of an Italian clothing manufacturer. His mark was registered in South Africa but allowed to lapse. Barel, a third party, later registered the trade mark ENRICO COVERI in his name. Both Barel and the first respondent, Popular Trading (PT), imported goods bearing the ENRICO COVERI mark into South Africa. Barel relied on the Counterfeit Goods Act to have the goods of PT confiscated. The central question before the court was the nature of PT's goods. This resolved itself in practical terms to the issue of the meaning of the phrase “counterfeiting”:

“(b) means, without the authority of the owner of any intellectual property right subsisting in the Republic in respect of protected goods, manufacturing, producing or making, or applying to goods, whether in the Republic or elsewhere, the subject matter of that intellectual property right, or a colourable imitation thereof so that the other goods are calculated to be confused with or to be taken as being the protected goods of the said owner or any goods manufactured, produced or made under his or her licence;”

The minority judgment (paragraph 23) reached the following conclusion:

“Even though Popular Trading’s imported goods are not ‘identical’ to Mr Barel’s goods, the fact that they bear a mark that is ‘the subject-matter’ or a ‘colourable imitation’ of Mr Barel’s registered trademark, would be enough to constitute counterfeiting. This is so because one could engage in counterfeiting merely by using the protected trademark, whether on the same goods or different goods. To be ‘the subject-matter’ means simply that the mark on the goods from Popular Trading must be identical to Mr Barel’s trademark. And to be a ‘colourable imitation’ means that it must look like Mr Barel’s trademark, so that it must be ‘calculated to be confused with’ or at least be of such a nature that it is ‘taken as being’ the registered trademark"

The majority judgment (paragraph 44) found the following:

"But, the above interpretation would ignore or exclude the meaning of the word ‘calculated’ in the definition of ‘counterfeiting’. It is a long-standing rule in the interpretation of legislation that every word in an enactment should be given a meaning and not be treated as tautologous or as superfluous. The Legislature, by using the word ‘calculated’ in the definition of ‘counterfeiting’, required the confusion to have been the result of planning, design or intention. Mens rea in the form of dolus is accordingly imported into the definition of ‘counterfeiting’ by the use of the word ‘calculated’. Thus, for B to be said to have committed counterfeiting, it must be established that B intended his goods to be confused with A’s protected goods or that he intended his goods to be taken as B’s protected goods. In other words, B acted with an intention to deceive. Without such intention, there cannot be counterfeiting under paragraph (b) of the definition of ‘counterfeiting’. This interpretation of ‘counterfeiting’ is consistent with what this Court has previously said about the meaning of ‘counterfeiting’, namely that ‘it involves deliberate and fraudulent infringement of trademarks’. In R v Johnstone Lord Nicholls described counterfeiting as fraudulent trading, while Lord Walker said that counterfeiting ‘involve[s] deliberate, and generally fraudulent, infringement of various intellectual property rights’."

PT thus triumphed. But what about the future?

In terms of the practical impact of the judgment, PT would not necessarily have much to celebrate. This is on account of the fact that both the minority and majority judgments by implication found that the goods of PT were infringing - which is a basic requirement of the Counterfeit Goods Act. All things being equal, Barel would seemingly thus be able to move against PT on the ground of section 34(1)(a) of the Trade Marks Act.

It would be up to EC to then attack Barel's registration. The use of EC's mark by way of the import activities of PT does not predate Barel's (alleged) use/filing date. Consequently, EC would not be able to rely on section 10(12) of the Trade Marks Act (prior user rights). That leaves open section 10(6) of the Act (prior well known mark). But the question would be whether ENRICO COVERI would be for shoes what McDONALD's was for hamburgers? The crucial date here would be the filing date of Barel's class 25 registration (in 2007). In the McDonalds's case the court used the criterion of the mark being well known amongst people interested in the goods. This was, practically, customers and potential franchisees. The latter could be substituted in the current context with retailers of shoes. So, was ENRICO COVERI well known amongst customers or retailers of shoes in 2007? However, Barel may seemingly rely on section 14(2) of the Trade Marks Act, which reads as follows:

“In the case of a trade mark which is sought to be removed from the register on the ground that it offends against the provisions of paragraph (6)…of section 10, the court or the registrar, as the case may be, may, in the case of honest concurrent use or of other special circumstances which make it proper to do so, refuse to remove the trade mark from the register.”

The question to be answered though is whether his use complies with the requirements for honest concurrent use? In terms of the relevant factors set out in the Pirie case, stated to be applicable to our law by Webster and Page South African Law of Trade Marks par 6.17, one problematic aspect might be whether the choice of the trade mark was honestly made? From the evidence it seems plausible that the trade mark was selected by Barel because it was an existing mark.

Should Barel's defence be upheld, it could then launch infringement proceedings against PT. On the other hand, if EC could succeed in expunging Barel's mark, it could in theory rely on section 35(3) of the Trade Marks Act (well known marks) to stop Barel's use. Again, the important question would be whether EC can meet the burden of proof? Was the mark well known on the date of Barel's first use?

If EC is content to have Barel on the register of trade marks, it could of course elect to apply for registration of its mark on the basis of honest concurrent use relying on its claimed use over several years.

The position in terms of passing off is complicated. It would seem that neither party can succeed against the other because both have used the mark for relatively long periods of time. PT claims use since 2009, Barel claims use since 2005. There is thus at least 16 years of concurrent use. But is it honest? The English writer Wadlow The law of passing off (6ed) 9-131 states for instance:

“The term ‘honest concurrent use’ derived from successive Trade Marks Acts is inappropriate in passing-off. If there has been concurrent user in fact, then it cannot be conclusive whether or not it was honest. The distinctiveness of marks is frequently destroyed by conduct which would have been actionable, even fraudulent, had the claimant acted in time. A fortiori, a concurrent right to use the mark, or more properly an immunity, can be obtained by use which was less than honest in its inception.”

It is sometimes said that a particular outcome might be law but it is not justice. The next step in this matter could make it hard to distinguish between the two.

Author: Wim Alberts

SOUTH AFRICA: Dead Serious Branding - Passing off resurrects

2025-06-27T10:23:00.004+02:00

Like a bad obituary headline, this case had all the trappings of drama - forged signatures (or were they?), misrepresented policies, and a family funeral parlour with a reputation as long as its 1938 lineage. It’s also a cautionary tale of what happens when undertakers take insurance partnerships too personally and forget to read the fine print… of their own making.

Background: The Family Name That Wouldn’t Die

Van Willing Funerals CC, a long-standing funeral business rooted in the Eastern Cape, woke up one morning in 2023 to discover their name had been emblazoned across insurance policies sold by Transafrica (aka Vision Direct 155 (Pty) Ltd), a licensed financial services provider.

Junior Van Willing, fresh at the helm since 2020, was outraged. He claimed Transafrica forged his signature, hijacked the goodwill of the funeral parlour, and was trying to impersonate his family’s legacy in the afterlife insurance game, like a policy salesman gate-crashing a wake.

But, spoiler alert, the High Court wasn’t buying it.

Enter the Agreement from Beyond the Affidavit

It turns out that the drama had a prequel: in 2022, Junior entered into an agreement with Transafrica (on behalf of Brijuwen CC - also his, because one CC just isn’t enough). This deal saw Brijuwen and a team of Junior-nominated salespeople become Transafrica’s official representatives, selling funeral policies under the name Van Willing Funerals. They even got trained in the Van Willing offices. Commission? Paid. Branding? Agreed. Signature? Digitally added (albeit poorly).

It was, in short, a co-branded insurance scheme with mutual benefit… until it wasn’t.

The Claim: Passing Off, Plain and Simple (Or Not So Much)

Van Willing’s claim was textbook passing off. The court, mercifully, didn’t need to exhume Roman-Dutch principles, it stuck to familiar jurisprudence, including Capital Estate, Caterham, and the like where the applicant must prove:

1. A protectable reputation,

2. A misrepresentation likely to deceive, and

3. A likelihood of damage.

On paper, Van Willing had the goods. The family name had been active in the funeral trade for nearly a century. Junior brought along testimonials, press clippings (some blurry, some illegible), and a 1993 Evening Post article calling his dad the owner of one of the “largest funeral firms” in the area.

But it all unravelled when the court found… he’d agreed to everything.

Misrepresentation? Not Quite, Says the Judge

The policies bore the Van Willing name, yes. But they were covered in disclosures:

- Underwritten by Centriq Life Insurance,

- Administered by Transafrica,

- Packaged by representatives trained and approved by Junior himself.

The name-dropping? Agreed upon in writing. The commission? Paid as promised. Even the contested signature? A mistake, sure - but not a forgery. Just a computer-generated “Junior Van Willing” footer where Transafrica’s should’ve been. Amateurish? Yes. Malicious? No.

The kicker? Transafrica stopped using the Van Willing name the moment they were asked to. No policies sold since the termination notice.

On Harm: Where's the Body?

Junior hadn’t shown any reputational harm or likelihood of harm. No unhappy clients. No substandard services. And in fact, policies sold under the Van Willing name probably brought in more funerals, and maybe even more foot traffic (pun intended).

Disparagement? Nil. Confusion? Possible, but unlikely given the full disclosures. Damage? Missing. The Court dismissed the application, with ordinary costs.

Afro-IP Takeaways: When Your Good Name Isn’t Enough

• If you invite someone to use your brand, don’t play dead when they actually do.

• Partnerships require clarity and clarity doesn’t come from unsigned affidavits, absent policyholder testimonials or pixelated press clippings.

• If you are authorised, you cannot infringe or pass off. It’s the proverbial nail in the coffin.

Brought to you by Afro Corne

Afro Leo says:

In contrast to the facts, this is no shoddy judgment (in fact a very good one) but take a look at the paras on “harm” [33-37] where disparagement and dilution of advertising goodwill are discussed [37] in the context of passing off. This is unusual. Disparagement and dilution are typically pleaded as forms of unlawful competition. Furthermore, the concept of “a common field of activity” or “area overlap” attracts unnecessary scrutiny – it’s all about a “likelihood of confusion” in passing off, which can take the form of a perception of endorsement or other business link. Harm is then inferred.

Links

Case Link: Van Willing Funerals CC v Vision Direct 155 (Pty) Ltd t/a Transafrica [2025] ZAECQBHC 21

BOTSWANA: Registered trade marks are a defence to passing off

2025-06-18T09:55:00.004+02:00

On 27 March 2025 Judge Busang sitting in the High Court of Botswana at Lobatse handed down a judgment dismissing Specsaver Botswana’s claim for an interdict and other relief including punitive costs against Strategic Ideal Holdings (Pty) Limited (Spec-Savers South Africa’s licensee), based on passing off.

The case is notable, from a legal standpoint, because:

a) it is only the second reported passing off judgment in Botswana;

b) it affirms the value of a registered trade mark in Botswana, being a positive right i.e. a right to ownership and use of the trade mark, and not simply a negative right to stop others from using; and

c) it shows that litigants in a passing off case must meet the evidentiary thresholds for establishing reputation and the misrepresentation.

Specsavers Botswana had alleged the adoption of their mark SPECSAVERS in 1999 and use of the mark thereafter. Spec-Savers South Africa had registered their trade mark from 2001 and begun using it, through their licensee, in 2014. Specsavers Botswana claimed that they had established a reputation symbolised by the mark such that the use by Spec-Savers South Africa licensee of SPEC SAVERS was likely to cause deception or confusion.

Spec-Saver’s South Africa defended the application by challenging the evidence filed in support of the passing off claim and by arguing that they were entitled to use their registered trade mark SPEC SAVERS because the rights conferred on them by their trade mark registration, were positive.

Section 74 and 81 of Botswana’s Industrial Property Act No.8 of 2010 (the Act) states that:

"74. (1) The exclusive right to a mark under this Act shall be acquired by Registration in accordance with the provision under this Part.

81. (1) Registration of a mark shall confer on the registered owner, the right-

(a) to exclusive ownership of that mark;

(b) to prohibit third parties from using the mark; and

(c) to institute court proceedings against any person infringing his or her rights.”

The court referred to case law out of Botswana, Namibia and South Africa on the delict of passing off finding that Specsavers Botswana had failed to provide sufficient evidence of reputation and misrepresentation, and that there was no detailed explanation of how the Respondent's conduct caused confusion. Further, that Spec-Saver’s South Africa’s trade mark was lawfully registered, providing them with a positive right to use and own the trade mark. The case was therefore dismissed with costs, including costs of counsel, and is a notable win for Spec-Savers South Africa.

Specsavers (Pty) Limited has appealed the decision.

Sport, brands, success and South Africa

2025-06-17T16:01:00.001+02:00

Fifteen years ago, to the month, South Africa hosted the FIFA World Cup Football tournament which also sparked a great deal of commentary on this blog on a number of intellectual property issues. Branding, sponsorships, counterfeiting, changes to legislation and the "World Cup effect" created by its spotlight on South Africa (and Africa generally) all became talking points, a much-needed boost for our economies and exposure for IP issues.

Indeed, on a personal level, within hours of this blog post - The [arrest? of the] Beautiful [at the] Game, I became immersed in negotiations between FIFA, Bavaria and the girls who were arrested for alleged ambush marketing. The circumstances of that incident are such that it is still widely noted as a seminal moment not only of that World Cup, where it stole headlines for a week, but also for discussion on what best practice is for ambush marketing concerns, the brilliance of marketers and also how to deal with ambush marketing effectively... or not. For me it meant missing a few games of football but gaining insights unlikely to be repeated in my lifetime.

Another topic that came to the fore was the use of national flags and state emblems and the legitimacy of it all. This post "Flagitis" became rather popular even though its conclusions were inconclusive and revealed the confusion surrounding permissions for use of national flags for promoting business. Fast forward on that topic and suddenly, in 2025, we have seen a number of notices in the national gazette permitting the use of the flag by a variety of different organisations in South Africa. People have obviously found the Minister to talk to and are bugging him regularly!

The examples are illustrated in the pic and were requested by organisations as diverse as the South African Revenue Service (the tax guys), Big 5 Cookware (as it says on the tin), Olive or Twist (campaign creators) and SA Greetings (gifts and accessories). A typical notice will read:

National pride was again on display this weekend with South Africa cricketers winning, against most betting odds, the ICC World Test Championship. This is against a backdrop of South Africa becoming Rugby World Cup winners in 2024 in remarkably close and challenging circumstances, and recent global wins for athletics, surfing and UFC. It's no surprise therefore that local marketers wish to latch onto national emblems in the interest of their organisation's success and the South African public obviously oblige.

It's not all roses (or rather, proteas) though; South Africa football jerseys are the slowest off the shelves based on their lacklustre performances and brand South Africa got somewhat "trumpled" in the White House recently. Tellingly, in RSA's arsenal on that occasion in May was none other than two RSA golfing stars and a 14kg book, not on development economics, but on, you guessed it, South African golf courses. Yes, golf is a possible way to Trump's heart but it's really a reflection of a national brand that is steeped so much in sport. Not just sport mind you, but success in sport.

Darren Olivier

BOMB SQUAD BEER? - PLUCKING A TRADE MARK OUT OF THIN AIR

2025-06-17T12:56:00.004+02:00

"Bomb squad" is a term well-known to supporters of the Springboks, the South African national rugby team, as referring to the reserves that come on after halftime. They are seen as an intimidating factor, having a significant impact as fresh players. On account of this the term has become part of the national psyche and sport folklore. It bears mentioning that the term has even now found its way into the political realm.

Malcolm Marx, a hooker, and prop Steven Kitshoff, now retired, are prominent players associated with the bomb squad. These players have, however, taken their association with the term bomb squad a step further by, in fact, becoming entrepreneurs and establishing a business based on the use of the term as a trade mark. The term is being used in relation to, amongst others, beer, and clothing. Trade mark applications for BOMB SQUAD – in a logo format - have also been filed. The applicant for the mark is listed as Marxhoff (Pty) Ltd, a name no doubt derived from the two players' surnames.

The originator of the concept of a bomb squad - fresh players, predominantly forwards - is the coach of the Springboks, Rassie Erasmus, who is in the employ of the South African Rugby Union (SARU). However, it is not known who first used the term in relation to a reserve squad of players. Be that as it may, should the SARU nevertheless be the "owner" of the mark?

In the Bafana Bafana case (SAFA v Woodrush) judge Harms commenced his judgment by stating (paragraph 1) that:

"The national soccer team had the nickname Bafana Bafana thrust upon it during 1992, first by the press and thereafter by the public. The appellant, the South African Football Association (‘SAFA’), manages, administers, controls and selects the team. After some years of hesitation and reluctance, SAFA adopted the name as a commercially valuable appellation for the team. Believing now that it is the ‘true proprietor and the holder of all the trade mark and other intellectual property rights in and to’ the name, it claims to have committed itself to the exploitation of its rights by means of an extensive licensing and merchandising programme. For instance, it embarked on an ambitious campaign of registering as a trade mark the name Bafana Bafana by itself and also in association with different logos on virtually all goods and services and in practically all classes under the Trade Marks Act 194 of 1993…”

From the evidence it appeared (paragraph 7) that:

“The origin of the name Bafana Bafana formed the subject of a linguistic or perhaps semiotic debate, as if the average consumer or soccer fan could care. One thing though is clear and that is that three journalists at the Sowetan newspaper were the first to use the appellation in connection with the national team during July 1992. The nickname caught on, somewhat to the annoyance of SAFA, because some cultures regard it as derogatory to refer to a team of (sometimes married) men as ‘boys’. Exactly when SAFA realised the value of the name is unclear.”

The SAFA did delay enough though to allow a third party to apply for registration in relation to clothing. In the matter, an expungement application brought by the SAFA against a registration for BAFANA BAFANA in class 25 held by Woodrush, the SAFA relied primarily on its intention to conduct an extensive merchandising program. This ground was rejected though (paragraph 20) because an intention to use does not create a preference to registration. However, even though the third party was successful, today, following no doubt some financial consideration being paid, the mark BAFANA BAFANA is indeed registered in the name of the SAFA.

Returning then to the BOMB SQUAD mark, it appears that Mr. Marx and Mr. Kitshoff do not have any special claim to the mark merely because they were indeed members of the bomb squad. In this regard it was said by Harms JA in the Bafana Bafana judgment (paragraph 14) that the proprietor of a trade mark need not be its originator. He referred to the ruling of Nicholas AJA in the Victoria’s Secret matter:

“In terms of s 20(1) [of the old Act] one can claim to be the proprietor of a trade mark if one has appropriated a mark for use in relation to goods or services for the purpose stated [in the definition of a trade mark], and so used it. (I use the verb appropriate in its meaning of “to take for one’s own”. It is a compendious expression which comprehends the words favoured by Mr Trollip in the Moorgate judgment, namely originate, acquire and adopt.)”

The players mentioned were thus not the originators of the bomb squad term, but they were first to appropriate it through the filing of a trade mark application as far back as May 2023 (the exact date of first use is not known). In the Bafana Bafana decision it was stated (paragraph 9), with reference to earlier case law, that there is no exclusive right to a name. However, there is no reason why an entrepreneur should not take the benefit of such advantage as he may be able to gain in the marketing of his goods and services by associating them with names that have become famous. Two examples from the music world can illustrate this principle further. UB40, the name of the famous band, is actually derived from the British Government’s unemployment benefit form 40. Likewise, the band LED ZEPPELIN took their name from the famous Zeppelin air ships, one of which was involved in the disastrous Hindenburg accident. A South African example could be where the infamous tax form IRP5 is adopted as the name for a music group.

In conclusion, it seems that the mechanism involved in cases such as that of the BOMB SQUAD trade mark, is that a word or expression “floating about” is claimed as a specific person’s trade mark - this expression then can be registered validly. Until then, it is basically res publica. In the sports world, the mere fact that a body is charged with regulatory authority over a particular sport, would not automatically give it preference to registration. A caveat should be noted though, being that the existence of an association of a term with a sporting body or a person is always a factual question. Thus, if the SARU, for instance, conducted a merchandising program using BOMB SQUAD in a trade mark sense, it could provide the Union with passing off rights in the fields concerned, or, in a registration context, with common law rights that could see it triumph. So it is not necessarily a free for all situation.

Wim Alberts

University of Johannesburg

South Africa: Inaugural CIPC Youth Awards

2025-03-28T08:05:00.008+02:00

Last night Afro Leo attended the inaugural CIPC Youth IP awards in the aptly name Heartfelt arena in Pretoria.

It was glitzy evening with 400 RSVPs consisting of dignitaries, contestants, representatives from industry, other important people and, of course, yours truly, all dressed up like a James Bond cast.

CIPC's Amanda Lotheringham was instrumental in putting it all together and gave an inspiring speech, together with Rory Voller, the Commissioner of CIPC, reinforcing the need for IP structures to form a bridge between innovation and value creation.

Van's Aircraft let down by its IP Policies as well

2024-03-13T21:58:00.007+02:00

Van's Aircraft is a very successful producer of experimental aircraft and aircraft kits based in the US. Their fleet of RVs (as they are known) have, over the past 50 odd years, become a major player in general aviation, the term used to describe aviation for private pilots and basically everything outside of commercial air transport. In 2023, over 1100 of their fleet were flying worldwide and are popular in Africa. Robin Coss Aviation Vans Aircraft Cape Town is their highly regarded distributor.

However, despite their success in the tangible world, their investment in intangible rights to protect and nurture their innovation appears to have been strangely absent, vastly undervaluing their company at a significant time of need in their history.

In December 2023, Van's Aircraft made a surprising announcement that they had severe cash flow problems and had been forced to file for Chapter 11 Bankruptcy protection - a legal way of retaining ownership of their assets under a plan to restructure and remain in business. Their woes relate to supply chain challenges, problems with laser cut parts, and faulty primers.

The Chapter 11 process requires Van's to publicly disclose their financial position for scrutiny. It is here that we make the observation that their intangible asset value is set at ZERO, and that there are no disclosures of any registered or unregistered intellectual property relating to the brand or designs of aircraft. They are simply recorded as "unknown".

A check of the national registers using TM View's database confirm their lack of protection, not listing a single trade mark in their primary market - the United States. Indeed, in class 12 (the class covering aircraft), it would appear that Vans Footwear have the jump on them. It would also appear that they do not have registers recording unregistered rights in their designs and knowhow in their various kit planes.

To understand the significance of this, for over fifty years Dick VanGrunsven has grown this company, yet those efforts reflect as ZERO in the brand value section on the balance sheet.

Despite the challenges of valuing brands and intangible assets accurately, few who know this company, would deny that its intangible value is substantially more than "nothing". The reality then is that the company is undervalued at a critical time when it is trying to regain trust from their stakeholders, which include their own customers.

Some may argue that by reflecting the brand as ZERO they deter potential creditors from seeking to bankrupt the company and secure the trade marks or other IP at auction at some time in the future, but this is misguided. In fact, it may just do the opposite because the auction value would be low using the valuation the company has placed on its intangibles.

By contrast, Cessna the bastion of the traditional, non-experimental trainer and small airplane market, has a swathe of trade mark registrations supporting its brand value. The reason for this is because brand valuation, properly executed, entails an assessment of the integrity of the rights in the company's intellectual property. This illustrates the while the experimental aircraft segment is flourishing, one should not experiment with IP if you want to your brand valuation to flourish. In a world where safety means everything, overlooking intellectual property governance and protection is particularly ironic.

A freedom to operate, sustainably.

2023-07-30T18:56:00.010+02:00

Last week I spent time in Botswana for a hearing. It also gave me an opportunity to pilot my first international flight. It’s a wonderful thing when two passions align in a way that is also sustainable, thanks to local innovation.

My daughter taught me about the fun of “Insta Reels” and this one I share with you now. I hope you enjoy it as much as we did capturing it!

Botswana is an impressive country. Its people are friendly, welcoming, and very capable. It is relatively small but vast (about 5% of South Africa’s population and 25% of its land mass) and an important business hub in the region. It is also home to a number of tourist attractions, particularly in the Okavango area.

Gaborone, the commercial capital, is open for business. Its skyline illuminates at night with brands of well-known eateries, banks, fashion houses and other commerce. Any exchange control is light, and the benefits of foreign direct investment are clear with an apparently, thriving middle class. Hotels are busy and their rates comparable, if not higher, than those in Johannesburg 300kms away, suggesting a healthy level of demand and investment.

The courts are stately and proudly bear “minimum standards of service” in their opening halls. Litigating in Botswana on intellectual property cases is somewhat familiar because their laws and procedures are largely based on the English system. That said, it is embryonic when it comes to the number of published decisions on this area of law and as a result, lean on advocacy and common law from South Africa. This is why we were present.

Getting there by road from South Africa is relatively painless except for border control which can lead to unpredictable, if not significant, delays. It is also not entirely stress free as road safety issues and hijackings (on the SA side) have been reported and naturally scare those who must travel between the countries. As a result, the country’s policing system has a no-tolerance approach which acts in stark contrast to their otherwise amiable demeanor. Necessary, it would seem, to protect what the country has nurtured.

Flying commercially is the preferred way of travel but it’s not inexpensive, and although it is a short hop, it can take as long as road travel once airport waiting times and clearance delays are considered. Although it is safer than road travel, it is significantly less sustainable for such a short trip. This is where a private plane becomes an option as it can be the most affordable, safe (compared to road travel), and sustainable option, especially if the plane is made by a company like Sling Aircraft, itself a wonderful example of South African innovation.

Sling Aircraft are based just south of Johannesburg and over the last two decades have made private plane ownership and flight relatively affordable for businesspeople with long commutes or requirements for local travel to tricky to reach places. A secondhand Sling 2 or 4 seat aircraft, for example, is no less affordable than an executive vehicle and has significantly less environmental impact. It runs on ordinary unleaded petrol and uses less fuel than an equivalent road trip. It also does not depreciate as fast a car and is simply a joy to travel in. It took just 1hr 20mins to travel the distance between the cities.

Of course, flying in small planes is not for everyone and although it is convenient, it is vulnerable to vagaries of the weather so careful planning is required. There is no perfect option when it comes to travel across our continent, but general aviation or small plane travel, marginalised in recent times, can make a comeback thanks to local innovators, like Sling Aircraft and others.

Flying oneself is an experience quite unlike any other and this aspect is not represented in a comparison of facts and figures between the different forms of transport. It is a privilege, a challenge, a responsibility, and a freedom, none of which can be measured. I am just grateful that my own journey to learn to fly, which started a few years ago, has culminated in this example of practical integration into my professional career, not only as a commuter option which I have been doing now for some time, but also to connect people, skills and highlight innovation, in a sustainable way.

South Africa's Eastern Cape hots up in latest passing off decision

2023-03-19T11:34:00.006+02:00

South Africa: In the case of Fire Logic (Pty) Ltd (Fire Logic) v Logic Group Africa (Pty) Ltd t/a Firelogik (Logic Africa), the Eastern Cape division of the High Court found this week that Logic Group had passed off its services by using the name “Firelogik”. The court interdicted them from using the name in the Cape provinces and ordered them to pay costs. This case illustrates the need for brand owners to have a zero-tolerance approach and be vigilant about trade mark misuse by others, to protect themselves with registered trade marks and use the courts to enforce where necessary.

Background:

Fire Logic has been in existence since 1994 and has developed a substantial reputation in its brand for fire protection and maintenance services. The dispute began in 2016 when the Logic Africa applied for a license using the name FIRELOGICS. This led to an exchange between the parties and Logic Group responded by stating that they were changing their name, but it never fully did so.

By 2019, Fire Logic realised that this nagging fire had only been partially doused when it received erroneous purchase orders from the retail store Pick ‘n Pay. Further correspondence was entered into, but it became clear, by August 2021, that the only way Fire Logic could stop the use of such a similar name, was to approach the court, which it did. It sought a final interdict and costs.

Logic Africa responded sometime later by taking down its website and opposing the applicant on the basis that a reputation could not be shown in the name and the no confusion was likely. It also claimed that the relief was then moot because of its name change in 2016.

Findings:

In a considered judgment, Acting Judge Bands found that FIRELOGIC was a fancy name and/or deserving of protection as a symbol of the goodwill attached to it. Then judge also found sufficient similarities in the name for there to be a likelihood of confusion, especially as the two parties operated in the “common field of activity” and in competition with one another.

For attorneys working with the nuances of application proceedings in South Africa, the judge re-affirmed that bare denials in affidavits are not sufficient to create disputes of fact under the Plascon-Evans rule. It is also an example of a situation where an final interdict can be granted even where the dispute is alleged to be moot.

These findings lead to a decision against the Logic Africa.

Comment:

The analogy between a fire that does not want to extinguish and the facts of this case that took seven years to conclude (absent an appeal) are useful in illustrating the need for effective trade mark management and protection from the outset. This means that when a fire ignites, to continue the analogy, one must make sure it is dealt with comprehensively at the start. This means a zero-tolerance approach, continued vigilance, the use of undertakings and the need to apply for trade mark registrations (for swifter, less costly and more predictable outcomes, as well as the possibility of damages in the form of a reasonable royalty). In these types of cases, punitive costs may also be a handier deterrent – it should not be possible for seven years of such misuse - something for lawmakers to consider in future.

2022 Crammer® Recordings - content for you!

2022-11-11T11:02:00.007+02:00

This year’s Crammer® event hosted by Adams & Adams in late October attracted over 250 attendees and is the largest legal conference of its type in Africa. It’s an annual event designed to distill a year’s worth of legal content (largely intellectual property related) into a single morning through short, sharp presentations. This year’s keynote speaker was Kimberley Taylor an inspiring, young businessperson who has created Loop, a groundbreaking logistics company, and Stephen Key, a renowned, US-based inventor and author who is passionate about helping others create value out of their innovations through inventRight.

The recordings have been made available and are now shared with you by Afro-IP. Enjoy!

Main Conference Room

Adams & Adams Crammer™ 2022 Case Law Review - Panel Discussion

Plenary Speakers: Kimberley Taylor and Stephen Key (click on links below for presentations)

Breakaway Room 1

Adams & Adams Crammer™ 2022 High maintenance – Intellectual property laws and regulations relevant t
o Cannabis in South Africa

Adams & Adams Crammer™ 2022 It’s getting hot in here: the effect of environmental sustainability on stakeholders

Adams & Adams Crammer™ 2022 Funding I.P. and R&D

Breakaway Room 2

Adams & Adams Crammer™ 2022 Security is a priority, not an option: outlook of insurance landscape post the storm

Adams & Adams Crammer™ 2022 Robots Inventing

Adams & Adams Crammer™ 2022 The Hype about the Meta Verse

Breakaway Room 3

Adams & Adams Crammer™ 2022 For the love of Chicken!

Adams & Adams Crammer™ 2022 The influence of data protection and privacy law on mergers and acquisitions

The art of sharing: 10 tips for writing blog posts and newsletters

2022-05-11T13:46:00.004+02:00

Sharing information on just about anything, particularly an esoteric subject like intellectual property in Africa is so important because it creates awareness, educates, and ultimately stimulates the market and interest in that subject. For the sharer or writer, the exercise is a worthwhile investment; it improves writing skills, understanding, profile, networks, work generation and can be quite cathartic. Yet, the way in which information is shared plays an important role in maximising the return on that investment. Here are 10 tips for improving blog posts and newsletters.

1. Focus on what’s important, upfront

What is the main thrust of the article, news report or clip that you want to share? Incorporate this in the first para to your post or intro, either through a quote from the article or in your own words.

Example: TYPO has recently released its findings on the success of the FORGOTTO system. According to the report “66% of users applying for applications find it time consuming and frustrating” ….

2. Summarise the content or what is covered by the article

The purpose of your share is to introduce and then give the reader more information on what the article is about. Your post or content should be able to stand alone as a summary of what is contained in the article, inviting the reader to research further by reading the article. In this way, it should function as an executive summary with an option to link to the article for further reading. Use headings, subheadings and bullet points to make it simple and concise.

This section, often a second para, could read: [subheading] The TYPO report canvasses the entire application process including application, publication, and registration. It also covers user feedback on pricing and a useful comparative report against user feedback on the LEKKA system as well as the following: [bullet points]. In general, FORGOTTO is not as functional or useful as the LEKKA system, according to the report. You can read more about the findings here (link).

3. Add value: ask a question or give an opinion or add additional information

Everyone can share but the difference between an aggregator and a thought leader is the value they then add. It needn’t be profound or lengthy. Often, just a question or statement on the article is sufficient for the reader to start thinking more deeply about what he or she is reading.

Example: One wonders if the FORGOTTO system was electronic and had a dedicated helpline, the experience of the user would be improved (blog post) or we are assisting FORGOTTO create a more user-friendly application system by offering them IT support training and user support (newsletter).

4. Add value: provide further information, links, and sources

Your opinion does not sit in a vacuum and itself can lead to debate, discussion, or contemplation. Invite the reader to other sources on the topic. Not only does this give them the impression that you are well read (giving gravitas to your question or view) but it creates trust and a deeper understanding to the topic.

You can read more about this development here and here (with links). In this article (link), the findings of the TYPO report are celebrated, and this article (link) advocates for a paper-based system for the FORGOTTO initiative.

For more tips on blog writing click here.

5. Treat news articles and even those from law firms, with caution

Try to quote and share from credible sources. Fact-check articles you link to as much as possible. Time is often a problem so use common sense, read critically, and adopt a third-party stance using quotes, if in doubt.

This article from ADOPT & ADOPT reports that “80% of IP rights holders have enforced their rights in Africa” and then don’t be afraid to question the statement. This statistic does seem high given the 2018 ELIO report (link) which gave a low score to user confidence on the enforceability of IP rights on the continent (see 3 above).

6. Link to articles and content in the correct way

This indicates respect and of course would be particularly ironic for a law firm or lawyer to err on. This means using quotes, linking to the article, and acknowledging the author. It also means quoting only what is necessary (see 1 above) for the purpose of the post or content. Be aware that photographs may have different copyright owners and you may not be able to determine who owns the copyright in a photograph. In this situation rather do not use the picture (see 9 below).

You can read the full article authored by Munchkin & Munchkin here (link).

7. Be consistent if quoting different styled texts

Sometimes a blog post or newsletter requires linking and commenting on a variety of articles written in different styles. The important aspect here is to be consistent in how your report, share and comment on them. The way in which you use dates, currency, quotes, and the style of comment should be consistent. For a firm newsletter, it is often quite factual and professional. For a blog post, it may be that you can have more of a personal touch (indeed, that can add value and create interest). If you use currency, try to convert it to one which your audience will understand e.g., dollars, if international.

8. Plain English please

No latin (court aquo, causa, mero motu, verbatim, dies non, quid pro quo, bona fide, inter alia). No jargon unless the meaning is clear from the context (the matter, confusing similarity, the registrar, class 31, the bench, appellant). No proper nouns unless they are proper nouns or defined (judge, intellectual property rights, applicant, appellant, court). No redundant words or phrases (in order to, in relation to, in respect of, true facts, small in size, consensus of opinion, past history). Avoid Shakespearian words (hereinafter, herein, wherefore etc). Generally, one sentence one thought. No cliches (live to fight another day, can of worms and … my favourite – “be that as it may” comma).

9. Headings and pictures are important

[licensed on a free to use basis]

Headings and pictures capture the reader. It is these two features of the content that get replicated on social media, in aggregated content and are most likely to attract interest. Choose them carefully and only after the post is written. Rather delay a post for decent picture than publish it without one but be copyright aware (see 6).

10. Be authentic

Authenticity and true sharing will develop trust and readership. Although self-congratulation is frowned upon, done appropriately it can develop a following and add to authenticity. Don’t be afraid to congratulate others, even competitors where it is due. Tag authors whose content you have used and be true to your objective, which should be a service to the client or community – in this case you!

E.g., I sincerely hope these ten tips have been helpful. They are not made up I can assure you! They are inspired by reader criticism measured in over 1 million pageviews of over 1000 posts and articles written by yours truly on Afro-IP, IP Finance, Oxford University Press, World Trademark Review, firm blogs and other publications - the output of a labour of love over many years. And now shared with you, with love.

Afro Leo

South Africa: Not so good for the SOUL

2022-03-17T21:47:00.002+02:00

A recent feast on three fast food decisions of the South African High Courts has, unfortunately, been a very underwhelming experience. Golden Fried Chicken, owners of the well know local Chicken Licken franchises sought to enforce their SOUL registered trade marks against three different uses in three different divisions of the local High Courts:

In each of the three divisions, the primary infringement claim was rejected. Where a counter claim was raised against the descriptive nature of SOUL (as in e.g. soul food), the argument was found to have some merit but nonetheless rejected, and there was even a finding that the mark SOUL was well known for the purposes of dilution (which was then summarily dismissed).

It should be appreciated that all three cases were brought on trade mark infringement grounds alone, and did not include passing off and unlawful competition, yet in all three cases, the court erred in the basic application of the infringement test by comparing the use made by Chicken Licken with the offending use i.e. a passing off type test, in finding that a likelihood of confusion did not exist between the marks.

The high oil mark, so to speak, is the final paragraph in the Kwazulu Natal case where the judge introduced the concept of “ubuntism” (the spirit of humanity) by suggesting that Chicken Licken, should, in the national interest, encourage rather than restrain use of SOUL, and that small businesses should be protected from trade mark infringement claims of larger organisations!

Whether or not you agree that any single proprietor should have exclusivity to SOUL for restaurant services or food, the reality is that, absent a successful or part cancellation claim, Chicken Licken have registered trade marks for the full gamut of “restaurant services” (which includes Greek restaurant services, café services and kitchen services) that attracts certain rights. These rights are to be able to stop identical and confusingly similar marks. On a basic application of the infringement tests SOUL SOUVLAKI, OH MY SOUL and SOUL KITCHEN (including logo marks) are simply, dead meat and should be capable of being stopped.

Why then were the judges so reluctant to grant the interdicts. Was it because Chicken Licken was too aggressive and corporate against likeable cottage style eateries? Was it because exclusivity in SOUL just feels wrong? Was it because the infringement test as constructed and set out in Plascon Evans (SA leading case) and others, easily leads to conflation and confusion, especially for judges who do not adjudicate trade mark cases on a consistent basis.

One gets the sense that the answer to all of these questions may have been “yes” because in some places, the findings are difficult to reconcile and in other places just downright wrong. But, in my humble opinion, the answer to the final question is the most emphatic “yes!”. If one takes the time, in the pleadings and the judgement, to break down the Plascon Evans test into its individual components and apply them step-by-step (an approach long advocated by this blog - see here), the chances of tossing the equivalent of a frozen chicken leg into super hot oil in a trade mark judgement, are reduced significantly.

Link to cases here, here and here.

Link to my notes with references to S35 tests, a breakdown of their application and a high level summary of where the judges erred.
Afro-IP's coverage of the SOULSA decision in 2009.

Six Steps for Value Creation in Heritage Brands

2021-11-09T13:39:00.008+02:00

From a legal perspective we know that brands are protected by a number of different laws including copyright, trade mark, design and even personality rights where, for example, the brand is linked to people. We know too that under these laws the legal owner has several rights that are linked to monetary consideration, compensation, or penalties. These include rights to costs, damages, reasonable royalties, accounts of profit and fines. This creates an economic market for these rights that can be traded, licensed, pledged and leveraged.

A heritage brand is a type of brand that is linked to culture which could be linked to language, tradition, or physical objects such as buildings or artefacts. In legal terms a heritage is linked to a property right that may be inherited or passed from one generation to the next. A brand, of course, is more than a distinguishing feature of a product or service, it is experiential in that it evokes meaning and feeling in those that encounter it. Heritage brands are therefore potentially very powerful and valuable to those who control them, both legally and intrinsically.

Africa is abundant in heritage. Its multiplicity of languages, traditions and ancient foundations mean that heritage, as a resource, is omnipresent. By attaching or symbolizing that heritage to and in a brand there are obvious opportunities for value creation. This value can simply be the control of that heritage for future generations, or it could be leveraged to create revenue streams. The value creation is protected and created, in a legal sense, largely through intellectual property laws.

Business has long recognized Africa’s potential for value creation in its heritage. From blockbuster films to hospitality, fashion and motor vehicles using or reflecting African culture and heritage, our worldwide consumer culture is replete with examples of these types of products and services. In most of these examples, local communities derive little or no benefit apart from the flattery that exists in such use and in some cases, the lack of control over such use threatens the very existence and fabric of their heritage. However, the astute business has managed to form partnerships with local communities to enhance the value of the brand and ensure its sustainability. For stakeholders, there are therefore good reasons to understand the potential value of heritage brands and their use.

Here are six steps towards protecting and controlling the value of heritage in a brand:

Audit the heritage: analyze the heritage through the lens of intellectual property to determine which features are protectable.

Rank and bank the rights: this involves understanding the costs and benefit of the protection, the international agreements for reciprocal protection of such rights and how the features in the audit can be used to cost effectively harness and capture the rights.

Identify the business model you wish to use: licensing, endorsing, certification, accreditation and enforcement models are all potentially available to you.

Ensure value creation for the community: this step requires patience, education and building trust. It also requires the delivery of real value to the community that is transparent and accountable.

Structure the venture: the structure needs to be efficient, protective of the IP, attractive to stakeholders (the public and potential funders) and transparent to achieve legitimacy. It requires good skill sets in each aspect of the delivery.

Communicate effectively: Governing, reporting and leadership are all very important in ultimate value creation.

SOUTH AFRICA: HIGH COURT STILL NOT QUITE GETTING IT RIGHT

2021-09-15T10:59:00.002+02:00

In the recent case of iCollege (Pty) Ltd (iCollege) v Excellence Skills Development and Mentoring (Expertease Skills) and ZA Central Registry NPC (Domain Name Registry), iCollege (Pty) Ltd sued Expertease Skills for trade mark infringement and passing off for their use of the mark ICOLLEGE, and requested the transfer of the domain name icollege.co.za from the Domain Name Registry. The citation of the Domain Name Registry is a mechanism for enforcement of the judgment, and they did not take part in proceedings.

It is apparent from the decision that the High Court, in dismissing the claim, has still not got to grips with the proper application of the trade mark infringement tests, and this post will focus on these errors and omissions and once again appeal to the court and legal practitioners to adopt and follow the step-by-step approach used in Europe (see earlier posts here, here and here) as it will help reduce errors in application. The majority of the decision surrounds the trade mark infringement claim under S34(1)(a) and so this post focuses on that.

The claim for passing off and Section 34(1)(b) and (c) are not dealt with in any detail and are abruptly dismissed as the Section 34(1)(a) claim was not successful, albeit that there are also obvious errors in this part of the judgement (for example at para 69 it states – “The test for passing off with regards to section 34(1)(c) is set out by the court in Laugh It Off Promotions”).

Facts and findings

iCollege provides accredited and skills-based training with the Sector Education and Training Authority (SETA) at its 17 campuses nationwide and at an e-learning centre. It is the registered proprietor of two device trade marks for iCollege covering education and training services applied for in 2013 and 2018. The 2018 mark is the colour mark as indicated in the table below.

At para 4 the judge makes a finding that iCollege has made “continuous and extensive use” of the trade mark since 2013.

Expertease Skills is an internet-based business that provides E-Learning courses to consumers located worldwide for international, technology vendor specific information technology certifications. It uses the marks illustrated in the table below.

In dismissing the iCollege’s the High Court in Pretoria made the following findings:

Comparison of the services (paras16-26)

“From the papers it would thus seem that the main similarity between the business of the applicant and the respondent is merely the fact that both render services in relation to “education and training services” (I have already pointed out that the applicant’s trade mark is registered in relation to, inter alia, “education and training services.”) However, in my view, it does not follow that the mere fact that both parties render “educational and training services” would mean that they in fact render the same or similar educational and training services, nor does it follow that the target market for these services (the potential notional customer) is the same (para 26). This sentiment is repeated at para 39.

Whilst the judge is correct that the two parties do not provide the same services, she confuses the test of passing off for that of trade mark infringement. For trade mark infringement purposes the services are identical in that they are both education and training services or, put differently, the services covered by iCollege’s trade mark are wide enough to cover those in respect of which Xpertease Skills uses their trade marks. This is a critical error.

Comparison of marks (paras 48-55)

Trade mark infringement was pleaded under all provisions of Section 34 and the test is the same for each of the infringements contemplated by that section. What is required of the judge is to make finding as to whether the marks are identical, similar or different. If the marks are different, the test stops there – there can be no infringement.

In this case, as Xpertease Skills uses a different mark to that which is registered, the marks are obviously, not identical. The question then is if they are not different, they must be similar and what that level of similarity is. Importantly, for this part of the test, the judge should not determine whether there is a likelihood of confusion. That would be premature as it involves the interplay of the other parts of the infringement tests e.g. similarity/identity of services, notional consumer, strength of the earlier mark etc.

Para 48-55 unfortunately misapplies the test for similarity of the marks and conflates it with other aspects of the tests for infringement. This makes it difficult to determine what the court’s conclusion is on the similarity of the marks. The test is also restricted to a comparison on the logo marks in use and appears to ignore the fact that Xpertease Skills also use the word mark on its own. This would reduce visual difference in the marks.

At para 50 the judge finds that “but for the word iCollege / ICOLLEGE, the two marks are not, in my view, similar. The ultimate test however is, as stated by the court in Cowbell, whether, on comparison of the two marks, there is a likelihood of confusion”. Perhaps by this the judge is saying that the marks are only similar in that they include the word iCollege, and that the rest of her analysis focusses on that. However, even this liberal reading of the reasoning it does not make sense because it fails to then draw on the conclusion on the similarity/identity of the goods in assessing the likelihood of confusion.

There are also other errors such as the determination of “material link” para 54. The term material link as used in the context of the Verimark case cited in the judgement, and in Europe is there to determine whether the use of the trade mark by the alleged infringer is trade mark use (as opposed to pure incidental or descriptive use) and in the dilution test. In this case it is trite that both parties are using iCollege as a trade mark and so the concept of ‘material link” under S34(1)(a) is met. It is use of a mark by the alleged infringer in the course of trade in the provision of educational services.

Notional Consumer (paras 56 – 65)

The penultimate finding under trade mark infringement is at para 63 and illustrates that if there is a problem in the application of part of the test, it perpetuates itself:

“ Apart from the fact that the applicant placed no evidence before the court to substantiate a likelihood of confusion within the context of this matter, I am not persuaded that any customer would be confused into believing that the educational services presented by the respondent are somehow linked to the applicant. I have already pointed out that there are material differences between the content of the courses presented by the parties as well as their respective teaching methods. The common element of the marks (“college” or the composite mark “icollege”) is, at best, weak in that it is, as already pointed out, descriptive of the educational vehicle both parties use to offer their educational services. The mark does not describe the applicant’s or respondent’s educational services. In fact, the trade mark does not tell the potential customer anything about the product. As such, the trademarks do not serve as a badge of origin of the educational services it presents. Adding the prefix “i” (composite mark) also does nothing more than to refer to the internet.”

The evidence to substantiate a likelihood of confusion for trade mark infringement purposes is through the application of the applicable test. Whilst it may be said that more evidence could have better served iCollege’s case, there cannot be said to be “no evidence” (for example, iCollege’s registration certificates are evidence of their rights). Furthermore the conclusions on likelihood of confusion are more appropriate to a passing off test.

The correct conclusions based on what is in the judgement in this case, appear to be better summarised as follows:

a.) the marks are similar if not highly similar in that they consist of the identical components “iCollege” which are a material part of the marks in the sense that they are the only verbal component, and visually prominent. They are also conceptually identical insofar as a meaning can be ascribed to them. The judge does conclude that the marks are at least similar.

b.) the services are identical in that those offered by Xpertease Skills are covered by the trade mark registrations. The judge acknowledges this but appears the be confused by the test of passing off which compares services in use.

c.) the marks have been “continuously and extensively” used (concluded in para 4) but are not well known. The marks consist of the descriptive words “college” and “I” for “internet” which are not strong components of the mark. Portions of the registered mark(s) (eg COLLEGE and I meaning INTERNET) is/are therefore relatively weak mark inherently. However, as iCollege’s marks has/have been used over almost ten years it has elevated their distinctiveness. In layman’s terms, not as strong as the iPhone mark but still a protectable mark and, of course, it is registered. On balance one may say that that iCollege’s mark is deserving of ordinary protection.

d.) the consumer (of educational and training services) is an ordinary consumer including those seeking educational services online. Those seeking educational services online may have a heightened level of awareness referred to in YuppieChef and may be more discerning.

e.) there is trade mark use of iCollege by the alleged infringer (as opposed to non trade mark use or incidental use). It is unauthorized.

So, based on the judgement, we have unauthorised trade mark use of a similar (if not highly similar) mark applied to identical services covered by the registered trade mark offered to an ordinary consumer seeking educational services online, who can be discerning.

In order come to the finding that the court did, it would need be convinced that there are material differences in the marks or that the consumer is so discerning that they would not likely be confused. I am not convinced that there are material differences in the marks or that the consumer is that discerning, but then who am I. My point is that had the court applied the test in this way (or perhaps had the papers have been pleaded in this way), the court would not make the mistakes highlighted above, be less open to an appeal and, if there was an appeal, the basis for the appeal would be clearer. It would make for greater clarity, expediency and clarity all round.