Spoor & Fisher - Intellectual Property law specialists Patents, trade marks, copyright, design, domain names, South Africa and Africa

UGANDA Trade Marks - Adoption of 9th Edition, Nice Classification - STILL NO Service Mark Protection

Mac Spence

STILL NO Service Mark Protection: A letter was issued on 10 June 2009, by the Uganda Registrar General’s office to all intellectual property practitioners.

17/06/2009

ASA Protects Trade Dress

Lauren Frizelle

In a recent ruling by the Advertising Standards Authority (ASA) of South Africa, Emirates Industries was ordered to withdraw the packaging of its Mister Bean Baked Beans product.

16/02/2009

AMBUSH MARKETING

Herman Blignaut

Ambush Marketing takes place when a trader seeks to utilise the publicity value of an event, for instance a major sports tournament or a concert.

13/01/2009

Politics and Trade marks in South Africa : Unusual bedfellows

Charles Webster

The law of unlawful competition entered the political arena in South Africa in late 2008, with round 1 going to the fledgling Congress of the People (COPE).

15/12/2008

Sun International Wins the suncityvacation.co.za Domain Name

Megan Reimers and Alicia Castleman

Since April 2007 a number of domain name disputes have been heard by the South African Institute of Intellectual Property Law ( SAIIPL).

11/12/2008

Aunt Caroline’s Image Upheld by the ASA

Megan Reimers

The Advertising Standards Authority (“ASA”) has ruled that the image of “Aunt Caroline” on Tiger Brands’ AUNT CAROLINE rice product, as apart from the AUNT CAROLINE brand, is worthy of protection.

11/12/2008

Madrid Trademarks - The View from Africa and Surrounding Islands

Mac Spence

Following the report on this site of Ghana’s impending accession to the Madrid Protocol[1], the following up to date overview may be helpful.

25/08/2008

GHANA Accedes to Madrid Convention

Mac Spence

On 16 June 2008 the Republic of Ghana deposited its instrument of accession to the Madrid Protocol 1989. The Protocol will therefore

30/06/2008

Trade Mark Translation - A Literal Problem

Joseph Lin

There can be no questioning the status of China as a major player in the global trade arena. China is the second largest trading partner

5/06/2008

Zambia - No Extensions of Time for Trade Mark Oppositions

Mac Spence

In a letter to practitioners the Registrar of Trade Marks has announced a change in procedure, regarding applications for extensions of time to oppose trade mark

23/05/2008

The United Kingdom and Kenya - The Kikoy Controversy

Mac Spence

Having been a Kenya advocate since 1969 and worn the kikoi long before that, I rejoice at the failure of The Kikoy Company UK Limited to register

20/05/2008

Madagascar Joins Madrid Protocol

Matthew Costard

Madagascar has joined the Madrid Protocol, and its membership will come into effect on 28 April

6/03/2008

Gambian Registry Resumes Publication of the Trade Marks Journal

Matthew Costard

We are delighted to advise that, after a break of many years, the Gambian Registry has resumed publication of the Trade

6/03/2008

Opening Shots at 2010 Goal

Dr. Owen Dean

The main objective of Federation Internationale de Football Association (FIFA) for the 2010 World Cup Tournament is to make it a success not only

12/12/2007

African Countries Updating IP Laws - The WIPO Initiative

Mac Spence

In an article New IP Law in Cape Verde published on this site on 1 November 2006, we told of the revival in Cape Verde of a Portuguese IP code dated 1940

14/11/2007

GAMBIA: New Industrial Property Act is Brought into Force

Mike Sevant

The Industrial Property Act (CAP. 95:03) was recently brought into force with effect from 2 April 2007. It repeals: The Registration of United Kingdom

20/11/2007

Quicker, Cheaper and Effective: Proceedings Before the Advertising Standards Authority

Delene Bertasso

These words are music to the ears of all plaintiffs and their attorneys in litigious matters. High Court Litigation has attracted the unfavourable

14/11/2007

South Africa - Red Cross Emblem Abusers Finally Brought to Heel

Ryan Tucker

For many years, the South African Trade Marks Office has regularly seen attempts by abusers to utilise the Red Cross Emblem in trade marks. With the

14/11/2007

Important Changes in U.K. Trade Mark Examination Procedures which will Affect Rights of CTM Trade Mark Holders

Kay Rickelman

Starting 1 October 2007, the U.K. Intellectual Property Office (UK-IPO) will be making significant changes in the procedures they use to examine trade mark

28/09/2007

Somalia & Somaliland - a Brief Profile Regarding the Registration of Trade Marks

Mike Sevant

Somalia is situated in East Africa with a coastline that borders the Gulf of Aden and the Indian Ocean. It shares borders with Djibouti

28/09/2007

“Country of Origin”- Labelling Requirements for Textile Goods

Herman Blignaut

Embattled local clothing and textile manufacturers have received a measure of support through the enactment of new labelling requirements

3/08/2007

The First .co.za Domain Name Dispute is Decided

Megan Reimers

The Adjudicator in the first co.za domain name dispute lodged with SAIIPL in South Africa has refused to order the transfer of the domain name

22/06/2007

Trade Mark Law Does Not Give Copyright Protection: Open Season for Comparative Advertising

Charles Webster

In a recent judgement in the case of Verimark – v – BMW the Supreme Court of Appeal (SCA) has reduced the scope of protection hitherto afforded

4/06/2007

Alternative Domain Name Dispute Resolution Procedure

Megan Reimers

There has recently been a welcome development in relation to domain name dispute resolution in South Africa. Domain name disputes have arisen more

14/05/2007

Important News! Service Marks Now Accepted in Nigeria

Chris Walters

It has been announced from Nigeria that trade mark protection is now available for service marks, by virtue of an order made by the Federal Minister of Commerce...

30/03/2007

Ambush Marketers Beware! 2010 FIFA World Cup is a Protected Event

Donald Thipe

Ambush marketing in the context of the FIFA World Cup can be defined as an attempt by a third party, which in most instances is a competitor of an official

6/11/2006

Gripe Sites, Culture Jamming & Media Activism - Can You Prevent the Unauthorised Use of Your Trade Mark?

Tracy Rengecas

It has become an article of faith among marketing gurus that brand owners should listen to and communicate with their consumers

1/12/2005

Service Marks in Africa

There has been a recent flurry of activity as regards the registration of service marks in Africa. Zanzibar is the latest jurisdiction to allow such registrations

1/03/2005

The Lion Sleeps Tonight - Update

Dr. Owen Dean

The ongoing battle to have Solomon Linda recognised as the originator of "The Lion Sleeps Tonight" came a little closer to victory on 7 September 2004

Disney has 3 Weeks to "Free" Mickey Mouse

Dr Owen Dean

The summons and particulars of claim in the landmark Solomon Linda case were served on Disney Enterprises Inc in the United States of America on 13 July 2004

Mickey Mouse, Donald Duck and Others "Kidnapped & Held Hostage" in Extraordinary Legal Proceeding

Dr Owen Dean

Leading copyright lawyer at Spoor & Fisher, Dr Owen Dean, has been awarded a court order authorizing him to attach legendary Disney

Circular No 357: Industrial Property Developments in Africa and Surrounding Islands

Mac Spence

Eritrea - Trade mark protection by cautionary notices. The Government of Eritrea, which for some years would not accept cautionary notices

Mozambique Trade Marks - The Need to File a Declaration of Intent to Use

Mozambique is a former Portuguese territory and its trade mark legislation (the Industrial Property Code) contains some characteristics of Portuguese

Circular No 368: Mauritius - Patents, Industrial Designs & Trade Marks Regulations 2004 -The Protection Against Unfair Practices (Industrial Property Rights) Regulations 2004

In our Circulars Nos. 356 and 358, we reported the enactment of the Patent, Industrial Designs and Trade Marks Act 2002, and The Protection Against

Kenya - Summary of Trade Mark Law Amendments 2002 - 2003

Mac Spence

The Trade Marks Law of Kenya has been closely based on that of the United Kingdom pre-1994 including provisions for service marks

Freedom to Corrupt a Trade Mark - Revisited

Owen Dean

There has been a recent flurry of activity as regards the registration of service marks in Africa. Zanzibar is the latest jurisdiction to allow such

1/11/2006

Botswana - Accession to Madrid Protocol

Tracy Rengecas

Botswana acceded to the Madrid Protocol on 5 September 2006. It will, however, only become a party to the Madrid Protocol with effect

1/11/2006

Audio Transcription of Interview on Classic FM on 25 September 2006 ; Copyright, Designs and Trade Marks

Herman Blignaut

Tony Blewitt: Once again on Classic breakfast we are talking Intellectual Property, in actual fact we are talking trade marks . . .

25/09/2006

New IP Law in Cape Verde

Mike Sevant

Until now, it has not been possible to file trade mark applications in the former Portuguese colony of Cape Verde; there was no physical

1/11/2006

Registrability of Container Marks Questioned

Charles Webster

This article first appeared in the June 2006 edition of Trade Mark World. Die Bergkelder Beperk – v – Vrendendal Koöp Wynmakery

1/08/2006

New Industrial Property Legislation in Mozambique

Marco van der Merwe

On June 12, 2006 a new Industrial Property Code in Mozambique came into force. This article focuses on the main changes brought about by

1/11/2006

New Draft Trade Mark Legislation in Ethiopia

Tracy Rengecas

Ethiopia has prepared draft legislation which, once promulgated, will bring about a more normal registration system to replace the

1/07/2006

South Africa Designates the 2010 FIFA World Cup as a Protected Event

Velile Memela

International sports events provide entertainment for millions of fans world-wide. As business ventures they can generate revenues amounting to

1/06/2006

Audio Transcription of Interview on Classic FM on 19 June 2006; Usage and Protection of Trade Marks

Carl Van Rooyen

We are continuing our talk on Intellectual Property with Spoor & Fisher and in the studio this morning we have Carl van Rooyen, a partner

19/06/2006

Audio Transcription of Interview on Classic FM on 12 June 2006; What is a Trade Mark and How to Register One

Carl Van Rooyen

We are continuing our talk on Intellectual Property with Spoor & Fisher and in the studio this morning we have Carl van Rooyen, a partner

12/06/2006

South Africa - Trade Mark Prosecution Procedure Streamlined

Tyron Grant

In the December 2005 Patent Journal, the South African Registrar of Trade Marks issued a practice note (Practice Note 1 of 2006) which came

1/05/2006

Important IP Information for SA Exporters

Tracy Rengecas, David Cochrane & Andre Meyer

The number of South Africans exporting products to foreign countries has grown over the last few years, but many of these exporters are

1/02/2006

Zimbabwe - Classification of Retail and Wholesale Services

Stephen Goldberg

We are pleased to report that the Zimbabwe Controller has now confirmed that retail and wholesale services are classified in class 35

1/11/2005

Circular No. 349: Madrid - An African Perspective

The Madrid System, which is governed by the Madrid Agreement and Madrid Protocol, has proved to be an effective and relatively inexpensive

1/09/2005

The Madrid Protocol - Understanding an International Trade Mark Registration

Shamin Raghunandan

In September 2003, South Africa approved the ratification of the Madrid Protocol but indicated that our accession to the Protocol would be

1/10/2005

Zimbabwe Adopts 8th Edition of Nice Classification and Substantially Increases Official Fees

On 19 August 2005, without prior notice, new trade mark regulations were published in Zimbabwe. The new regulations

1/09/2005

Spoor & Fisher Comment on the SAB vs “Laugh it Off” Case: Both Rights Enjoy Equal Status Before Court

Dr. Owen Dean

The issues involved in the South African Breweries (SAB) vs Laugh it Off case are not new. In 1996, the Constitutional Court rendered a

1/06/2005

The Laughing is Over – Setback for Trade Mark Dilution

Charles Webster

The most significant trade mark judgment since the McDonald’s case was handed down by the Constitutional Court of South Africa on 27

1/06/2005

Getaway/Wegbreek - Translation of a Trade Mark Constitutes Infringement - Update

Shamin Raghunandan

WEGBREEK, the Afrikaans outdoor magazine has announced that it has changed its name to WEG. This follows the ruling of the Cape High Court

1/04/2005

Counterfeit Goods and Transshipment in South Africa

Stephen Goldberg

On November 30, 2004, the South African Supreme Court of Appeal gave its ruling in the matter of A M Moola Group Limited and others versus

1/04/2005

Getaway / Wegbreek – Translation of a Trade Mark Constitutes Infringement

Shamin Raghunandan

The Afrikaans language travel and outdoor leisure magazine, WEGBREEK, first published in April of 2004 by New Media Publishing, has been

1/02/2005

Circular No. 356: Mauritius - The Patents, Industrial Designs and Trade Marks Act 2002; The Protection Against Unfair Practices (Industrial Property Rights) Act 2002

Mac Spence

MAURITIUS - The Patents, Industrial Designs and Trade Marks Act 2002; The Protection Against Unfair Practices (Industrial Property Rights) Act 2002

1/09/2002

Ghana - Service Mark Applications Now Accepted

Chris Walters

We are pleased to report that service marks are immediately acceptable in Ghana. In our Circular No. 370 of May

1/12/2004

Update - Trade Mark Dilution Through Tarnishment of the Black Label Trade Mark in South Africa

Duncan Maguire

The appeal to the Constitutional Court in the Laugh It Off Promotions vs South African Breweries case was heard on Tuesday, 8 March

1/03/2005

Circular No. 371: Mozambique Trade Marks - The Need to File a Declaration of Intent to Use

Mozambique is a former Portuguese territory and the registration and maintenance of trade marks is dealt with in terms of the Industrial

1/08/2004

Libya Update

In our Circular No.365 dated August 2003, we reported the reorganization of the Libyan Trade Marks Office. Since then it has been possible

1/08/2004

Circular No. 369: Africa's Two Regional IP Registries (OAPI and ARIPO)

As you may know, our two firms operate across the African continent that contains some forty-four (44) national and/or regional jurisdictions

1/05/2004

Circular No. 370: Ghana - New Trade Marks Legislation

Chris Walters

We are pleased to report that Ghana has substantially revised and modernised its trade mark law, by the enactment of a new Act, known as The Trade

1/07/2004

Namibia Accedes to Madrid

Stephen Goldberg

Namibia has acceded to the Madrid Agreement and to the Madrid Protocol concerning the international registration of trade marks

1/05/2004

South Africa - Trade Mark Certificates of Registration Issued in Error

Stephen Goldberg

From time to time in opposition matters, the Registrar of Trade Marks has erroneously issued the Certificate of Registration for a trade mark

1/03/2004

Kenya - Summary of Trade Mark Law Amendments 2002 - 2003

Mac Spence

The Trade Marks Law of Kenya has been closely based on that of the United Kingdom pre-1994 including provisions for service marks

1/03/2004

Community Trade Marks

Stephen Goldberg

Ten new countries will become members of the European Union on 1 May 2004. These are the Czech Republic, Cyprus, Estonia, Hungary

1/04/2004

Revised Examination Procedure in Mozambique

Stephen Goldberg

Pursuant to Article 191 of the Industrial Property Code of Mozambique, the Central Department of Industrial Property of the Ministry of Industry

11/12/2003

Kenya - Accession to Madrid Arrangements now Effective

Mac Spence

Kenya acceded to the Madrid Agreement Concerning International Registration of Marks, and the Protocol relating to that Agreement

25/09/2003

Bafana Bafana - Who Owns This Nickname for the South African Soccer Team?

This article was first published in the June 2003 edition of De Rebus, the South African Attorneys´ Journal, and is published here with permission.

2/06/2003

Circular No. 365: Libya - Important Development; Loss of Existing Trade Mark Rights!

Mac Spence

In our Circular No. 357 dated October 2002, we reported a substantial increase in official fees for trade mark matters in Libya. It was then

1/08/2003

Circular No. 362: Ethiopia - Statements of Property, Use and Protection no Longer Allowed

The Ethiopian Ministry of Trade and Industry has recently advised that it will no longer accept Statements of Property, Use and Protection

1/04/2003

Libya - New Trade Mark Systems

Mac Spence

In our Circular No. 357 we reported a substantial increase in official fees for trade mark matters in Libya. It was thought this might portend the re-activation of the

1/12/2002

Circular No. 358: Mauritius - Establishment of Spoor & Fisher Mauritius: New Laws in Force, Service Marks can now be Registered

Spoor & Fisher Mauritius We are delighted to announce the launch of Spoor & Fisher Mauritius. Trade mark and

1/01/2003

Nigeria - Trade Marks Journal

Mike Sevant

In July 2002 we reported that after an absence of more than two years, three issues of the Nigerian Trade Marks Journal had been published

29/11/2002

Sponsorship Under Attack by Ambush Marketing

Dr. Owen Dean

Sponsorship of events, sports teams, tours and the like has become a very popular and effective means of promoting brands and brand

1/06/2002

Circular No. 355: Trade Mark Protection in Jersey and Guernsey (The Channel Islands)

Mike Sevant

We are pleased to advise that it is no longer necessary to file powers of attorney when applying for the registration or maintenance of trade marks in

1/08/2002

Registering Your Domain Name and Ensuring Security

Charles Webster

For purposes of this presentation the most important legal issue in establishing and running your website revolves around the name for your website, more

1/06/2001

Pharmaceutical Tablet Shape Trade Mark Registration Crumbles Under Attack; Triomed (Pty) Ltd -vs- Beecham Group PLC and Others Unreported Judgement of Smit J Dated 19 December 2000 (TPD)

Charles Webster

Beecham Group Plc is the registered proprietor of trade mark No 95/13154 in class 5 in respect of antibiotics. The trade mark relates to a photograph

1/02/2002

The South African Position on Parallel Importing

Dr Owen Dean

"It has often been said that competition is the life blood of commerce. It is the availability of the same, or similar, products from more than one

1/04/2001

Domain Name Dispute - Sanlam.com and PickandPay.com

Stephen Goldberg

Sanlam and Pick ´n Pay are involved in a dispute with a US company, Selat Sunda Incorporated, which has registered the domain names sanlam.com

1/09/2000

Domain Name Dispute - Nandos.com

Chris Walters & Stephen Goldberg

The WIPO (World Intellectual Property Organization) Adminstrative Panel of the Arbitration and Mediation Center has again assisted a South African

1/06/2000

Trade Mark Infringement on the Internet

Delene Bertasso

A British Court has recently ordered the computer company Mandata to pay damages and costs in the substantial sum of £80 000.00 to its competitor

1/08/2000

Liquorice Allsorts - Is it a Trade Mark?

Stephen Goldberg

On 16 March 2000, the Supreme Court of Appeal of South Africa handed down its decision in the matter between Cadbury (Proprietary) Limited

1/03/2000

Domain Name Disputes

Stephen Goldberg

At the beginning of March 2000, it was reported in South African newspapers that Safmarine had thwarted a US$20000 extortion attempt by

1/03/2000

Circular No. 353; Tunisia - Trade Mark Law No. 36 of 17 April 2001

Mike Sevant

This new Tunisian trade mark law came into force on 17 April 2001. It replaces the Tunisian Trade Marks & Trade Names Law dated 4 June 1889

1/06/2002

Internet Domain Names and "Cybersquatting"

A South African shipping company, Safmarine, has recently had occasion to use the arbitration service of the World Intellectual Property Organisation (WIPO) to resolve a dispute over an Internet domain name. The WIPO arbitration service was launched

1/03/2000

Circular No. 351: Trade Mark Classification Systems for Goods and Services in Africa

As a trade mark registration grants an exclusive right to use the mark (in other words a monopoly), the ambit of such monopoly must be restricted

1/04/2002

Circular No. 347; ARIPO Revisited (Trade Marks)

Since our last circular concerning ARIPO (circular no. 319, March 1997) there have been a number of changes. These include an increase in the. . .

1/11/2000

Dispute Between South Africa and the European Union Concerning Grappa and Ouzo

It was announced on 17 February 2000 that South Africa and the European Union have reached a compromise on the use of the terms "grappa" and

24/02/2000

Circular No. 346: Africa Newsletter (Trade Marks)

One of the most common problems that we experience in the registration of trade marks in Africa is the delay that occurs in the advertisement of

1/11/2000

An End to Tax Deductions for Trade Marks?

Since our previous report on the proposed amendments in section 11(gA) on 27 September 1999 we have met with representatives of the South

1/11/1999

South Africa - Use of the Terms "Sherry" and "Port"

Louis van Wyk

South Africa is currently negotiating a global free trade agreement in relation to agricultural products with the European Union (EU). The negotiations began

1/10/1999

Misappropriation of Foreign Trade Marks - Possible Solutions to the Problems Faced by Foreign Investors

Charles Webster

The foreign investor who is precluded from using his own trade mark in South Africa will be discouraged from investing in South Africa - a loss which this

1/01/1990

Jurisdiction of the Court in Trade Mark Infringement Matters

Charles Webster

The Professional Provident Fund of South Africa v PD Jacobs and PPI Makelaars (judgment of Roux J handed down on 29 February 1996) was one of the

1/01/1990

Protection of Container Marks in South Africa; Cointreau et Cie SA v Pagan International 1991 (4) SA 706A

Charles Webster

The Appellant, Cointreau, is the proprietor of various Cointreau marks including, in particular, two container marks covering liqueurs. The distinctive . . .

1/01/1990

Procedural Implications of the New South African Trade Marks Act

Charles Webster

The regulations for South Africa’s new Trade Marks Act have now been published and the Act comes into force on 1 May 1995. We have already dealt with

1/04/1995

Survey Evidence in Trade Mark and Passing-Off Cases - a Valuable Contribution of an Exercise in Futility?

Charles Webster

A survey is a practical tool whereby an attempt is made to discern the views of the whole population, or a particular representative portion thereof. The views

1/01/1990

Use of a Disclaimed Feature: Can It Constitute Infringement?

Charles Webster

The issue in question before the Appellate Division in Slavin´s Packaging (Pty) Ltd v Space Case Products (Pty) Ltd (judgment of Plewman AJA handed

1/01/1990

Protection of Famous Foreign Trade Marks

The question of the protection enjoyed in South Africa by famous foreign trade marks recently received the attention of the Appellate Division of

1/01/1990

Paper Anniversary of the New South African Trade Marks Act

Charles Webster

The new South African Trade Marks Act (No. 194 of 1993) will celebrate its first anniversary on 1 May 1996. By 29 February 1996, 12330 applications had

1/01/1990

Trade Marks in South Africa - the 1993 Act

Dr Owen Dean

The Trade Marks Act No. 194 of 1993 ("the Act") has had a particularly long gestation period. The draft Trade Marks Bill was published

1/01/1990

Taking the Bite Out of McDonalds

Dr Owen Dean

Joburgers Drive-Inn Restaurant, a company operating a chain of fast food outlets under the name "Chicken Licken", have brought an application before

1/01/1990

The Interplay Between Trade Mark and Design Protection

1995 has seen the promulgation of two new Intellectual Property Statutes. On 1 May of this year, the Designs Act No. 195 of 1993 and the Trade Marks Act No

1/01/1990

The Judgement in McDonald's

Dr Owen Dean

On 5 October 1995 judgment was handed down in the Transvaal Provincial Division of the Supreme Court of South Africa in three matters involving

1/10/1995

South Africa - the "Well-Known" McDonald's Saga

Reinard Michau

The decision of the Appellate Division of the Supreme Court of South Africa handed down on 27 August 1996 finally put to rest the international criticism that

1/01/1990

Intellectual Property and Comparative Advertising

Dr Owen Dean

Intellectual property law, i.e. that part of the law which protects and grants exclusive rights in products of the intellect, comprises the laws of patents,

1/10/1995

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