Region: Africa & Middle East

In <i>Bayerische Motoren Werke AG v BW Tech</i>, the Transvaal Provincial Division of the High Court has outlined the scope of the defence set out in Section 34(2)(c) of the South African Trademarks Act, which affords protection to parties who make a <i>bona fide</i> use of a registered trademark to describe their goods or services.

17 January 2005

In <i>Die Bergkelder Beperk v Shoprite-Checkers Ltd</i>, the Cape High Court has ordered the expungement of the plaintiff's container mark, the Grünberger bottle, on the grounds that it was not distinctive at the time of registration. This is an interesting conclusion as the court had conceded that the statutes in force at the time the mark was registered required it to accept that the mark was distinctive at the date of registration.

10 December 2004

The District Court of Jerusalem has declared enforceable in Israel a trademark infringement ruling issued by a US district court against the operator of a website run from Israel. The Jerusalem court held that (i) the US ruling did not contradict public order in Israel and was thus enforceable, and (ii) the links between the website and the United States were sufficient to give the US court jurisdiction in the first place.

24 November 2004

In <i>Toto Gold Subscribers Club Ltd v Israel Sports Betting Board</i>, the Israeli Supreme Court has upheld the Jerusalem District Court's ruling that, among other things, the use of TOTO GOLD in respect of games of chance infringed the trademark TOTO. Although the Supreme Court treated TOTO as generic, it affirmed that a generic mark may be registered upon proof of acquired secondary meaning.

18 November 2004

The High Court of South Africa has rejected an application by Disney Enterprises to free 240 trademarks and the copyright in <i>The Lion King</i> from attachment to a copyright infringement claim against the company. The trademarks, which include MICKEY MOUSE and DONALD DUCK, will now remain attached until the final resolution of the case.

26 October 2004

In <i>Colgate-Palmolive Company v SmithKline Beecham plc</i>, the High Court has confirmed that where the registrar of trademarks erroneously issues a certificate of registration for a trademark in respect of which the opposition period is still open, interested parties should formally apply to correct the error on the register pursuant to Section 24(1) of the South African Trademarks Act.

11 October 2004

The Israeli Supreme Court has rejected a lower court's finding that a well-known mark can only be protected against the use of a similar or identical mark where that mark is being used for goods in a similar field to those covered by the well-known mark. It stated that the decision as to whether to grant protection to a well-known mark depends on the facts of the case.

04 October 2004

The General Directorate of Patents has begun accepting applications forthe registration of industrial designs, even though the Industrial Designs Lawhas not yet been published. It is not yet clear whether the law will apply toregistrations filed for designs that have already been published, or whether itwill protect only those designs published after filing for registration.

29 September 2004

The Israeli registrar of patents, designs and trademarks has issued two circulars that outline new examination policies for slogans and three-dimensional marks. The circulars indicate that slogans and three-dimensional marks will only be registered if they (i) identify the origin of the goods to which they apply, and (ii) have acquired distinctive character.

21 September 2004

The Libyan General Directorate of Companies and Trademark Registrations has issued a notice inviting owners of trademark rights in Libya to take steps to revive their rights, for a fee. It is surmised that the directorate is referring to marks filed or registered prior to 1981. Trademark owners have until December 31 2004 to revalidate their registrations and/or complete formalities relating to pending applications.

31 August 2004