Opposition

An opposition can only be based on specific grounds. For example, you cannot object just because you want to have the trade mark instead of someone else.

It is advisable to have a specialist assist you in the objection process — either to defend your application for registration, or to object to someone else’s ­application.

The Trade Marks Act sets out what grounds for objection are available. Broadly speaking, the most common objections are the following:

• The trade mark is confusingly similar to a trade mark in which the objector has a prior interest; and/or
• The person named as applicant cannot truly claim to be entitled to registration in his name; and/or
• The trade mark (or parts of it) does not satisfy the requirements for registrability; or a disclaimer has to be added.

There are other grounds for opposition. One of them is called ‘dilution’ and we will look at its principles when dealing with infringement. Dilution does not seem to come up so often in opposition proceedings.

Opposition based on prior rights

Most trade mark cases centre on the question of whether the trade mark used by one person is so similar to the trade mark of another person that customers can be deceived or confused — that they could be misled, in other words. The concept of ‘confusing similarity’ features particularly in infringement cases, and often also applies when the registration of a trade mark is opposed.

An important aspect pertaining to virtually all intellectual property rights is ‘who came first?’ This is because, with human ingenuity and creativity as it is, it is possible that two completely different people, in different places and with no connection to each other at all, can invent precisely the same gadget. Two different brand managers, one in Durban and the other in Cape Town, can devise the same brand logo. The law, generally speaking, only gives rights to the person who was first — therefore, priority is all-important. (We have already seen how internationally-based applications have an impact.)

Therefore, when it comes to opposing someone’s application for registration of a mark which is confusingly similar to your trade mark, you have grounds to do so where:

• You have a prior trade mark registration; and/or
• You have a pending application for a trade mark registration that has an earlier filing date; and/or
• You have ‘common-law rights’ that predate the filing of the application which you want to oppose.

Read sections 10(12), 10(14) and 10(15) of the Trade Marks Act.

Here, the opposition is based on the fact that the trade mark you are opposing is confusingly or deceptively similar to the trade mark in which you claim to have prior rights. This concept of confusing or deceptive similarity is discussed in more detail in Primary infringement and Secondary infringement, in the context of infringement.

Opposition based on proprietorship

We have already touched on the question of a valid claim to proprietorship in The proprieter. In practice, it sometimes happens that company ‘A’ lodges an application to register the brand name of goods for which it has the sole distribution rights. However, the goods do not originate from ‘A’ — they are manufactured by another party, company ‘B’, according to ‘B’s criteria and quality controls. ‘B’ has chosen the brand name for the goods. ‘B’ has only granted ‘A’ the rights to distribute the goods. Therefore, ‘A’ is not the proprietor of the trade mark. This is one example of a wrong claim to proprietorship.

It is worth repeating that specialist advice is valuable in respect of the proprietorship issue.

Trade mark rights, like all intellectual property rights, are territorial, and another important arena in which the question of a valid claim to proprietorship arises is the global village.

Remember we looked at how governments make laws? Well, the parliament of France makes laws to regulate what happens in France; the Japanese parliament (called the National Diet) makes the laws to regulate what happens in Japan, and so on around the world.

Because intellectual property laws are statutes, this means that each country will have its own statute for trade marks (and patents, copyright and designs). We therefore talk about an American trade mark, or German copyright, or Japanese patent. As we have seen, an American proprietor can obtain rights to his trade mark in South Africa. However, the rule is that the foreign proprietor must have used the trade mark in South Africa to get common-law rights here, or he must have registered the trade mark here.

This is where a problem can come in. Let’s say there is a brand which is well known in the United Kingdom (WAGAMAMA, for example) but the brand has never been used in South Africa: there are no WAGAMAMA restaurants here. And, let’s just say, the owner of the WAGAMAMA brand has never registered the trade mark in South Africa; maybe the company never intends to do business here, whatever.

Since the Wagamama company has never staked a claim to proprietorship of the brand in South Africa, can I open up a restaurant called WAGAMAMA, and apply to register the trade mark in my name? It is a good question, and the answer is complicated.

Edgars tried to register the trade mark VICTORIA’S SECRET, even though it knew that this was a brand in the USA. The American company objected, but it had never traded in South Africa. The Court said that unless there was something fraudulent in Edgars’ conduct, it was in order for it to adopt a foreign trade mark which had not been used in South Africa.

The VICTORIA’S SECRET case was over 25 years ago. Since then things have changed. Our law now says that a foreign trade mark can get protection in South Africa, even though it has never been used in business here — if it is well known in the country (for example, because of the internet).

Read section 35 of the Trade Marks Act.

The bottom line is this: if the trade mark has not been used in trade in South Africa, and has not been registered (or an application for registration filed) it is free to be adopted — provided it is not well known.

Example: a friend goes on holiday to Australia and sends you an Instagram taken outside a pizzeria called BABA GINO’S. It is a small local pizzeria, not known outside of that neighbourhood. In particular, it is not ‘well known’ in South Africa. There would be no problem in adopting that trade mark in South.

Before 1994, McDonald’s had never traded in South Africa due to its anti-apartheid stance. However, when a South African company tried to register and use the brand, it was prevented because, even then, MCDONALD’S was well known in South Africa as an American fast-food franchise.

Get advice from a specialist trade mark lawyer if you are uncertain about a foreign trade mark.

Opposition based on a lack of inherent registrability

In Starting out: Choosing your brand name we looked at the question of descriptiveness and what a trade mark (ideally) should not comprise or contain. Even though the Registrar of Trade Marks has accepted an application, someone can claim that it should not be registered on account of this requirement.

Let’s look at it again. The basic principle is that, to be registrable, a trade mark must be capable of distinguishing the goods (or services) in respect of which it is to be registered, from the goods (or services) of another person. In other words, the trade mark is a way for consumers to tell that it is a product from a particular manufacturer or supplier.

Here are some instances where registration is forbidden.

• A mark which consists exclusively of a sign or an indication designating certain characteristics of the goods or services. These include their:
  • kind — for example, ‘biltong’
  • quality — ‘fresh’
  • quantity — ‘lots’
  • purpose — ‘fire lighter’
  • value — ‘rare’
  • origin — ‘Cederberg’ (for rooibos tea, for example)
  • mode of production — ‘hand made’
  • time of production — ‘night harvest’

Read section 10(2) of the Trade Marks Act.

• Registration is also forbidden of a mark which consists exclusively of a sign or an indication that has become customary or established in trade practices, or trade jargon. For example, ‘cloud’ would not be registrable for computing services.

At the opposition stage, an objection on any of the grounds we have looked at must be supported by facts. Let’s now look at the procedure and how these facts are presented.

The opposition procedure

Remember that you have three months to lodge an opposition, dated from the advertisement in a particular Patent Journal. This period can be extended, but not indefinitely.

Usually, your lawyer will write a letter to the address for service of the application, setting out the grounds for your objection. This might result in a solution (for example, they might write back with an acceptable offer) without the need to institute formal proceedings. If not, you need to decide whether to lodge formal opposition proceedings. You can do this yourself, but it is advisable to get specialist assistance.

Formal opposition proceedings entail the following.

• First, your attorney will lodge a Notice of Objection at CIPC together with an affidavit setting out the facts which support the particular ground(s) of opposition. A copy of this documentation will also be sent to (‘served on’) the applicant’s address for service.
• The applicant for registration has two months to lodge and serve his affidavits. This response will set out answers to the allegations in your affidavit, and present facts supporting the application for registration. The two months can be extended by agreement, or by the Registrar.
• As the objector, you have one month to deliver an affidavit replying to the applicant’s answering affidavit. This period can also be extended.

An affidavit is a statement which is signed in front of a commissioner of oaths (for example, a police officer or an attorney). The person making the affidavit must take an oath that the contents are the truth. It is a crime to lie in an affidavit. It is advisable to sign every page, including any annexures.

When all the affidavits have been lodged, the Registrar will allocate a date when the applicant and the objector can make submissions and present argument to a hearing officer. This argument is based on the facts set out in the affidavits — in other words, the evidence — and is usually handled by legally trained people. Often, an advocate will be briefed to present your case at the hearing. The Registrar will sometimes refer the hearing of the opposition to the High Court. Typically, the hearing will last a few hours, and the judgment will be ‘reserved’. This means the decision will only be given later — usually after a few months.

The decision can be appealed.