South Africa: an important trade mark decision for Clearvu
In an important judgment a few years back (the so-called Clearvu decision), the South African Supreme Court of Appeal (SCA) held that a company that bids for a competitor’s trade mark as an Adword will not necessarily be guilty of unlawful competition or an infringement of trade mark rights. The court said that the conduct will only be unlawful if the company that bids for the trade mark deliberately confuses the public into believing that its goods or services are connected with the trade mark owner.
There was, however, a further issue that needed to be resolved in this litigation and this has now been decided by the SCA. As part of an opposition that had been filed against an application to register the trade mark Clearvu in respect of security fencing, the SCA needed to decide what, if any, endorsements or disclaimers should be imposed against the registration.
This required the SCA to examine the issue of disclaimers and other endorsements in some detail. Dealing with the point that the trade mark Clearvu is the phonetic equivalent of the term ‘clear view’ – a term that is obviously relevant in the context of security fencing - the SCA said this: ‘The phonetic equivalent of a non-distinctive word is itself non-distinctive and it would seem to follow that if the word is itself one that ought to be disclaimed then its phonetic equivalent should also be disclaimed.’
The SCA therefore held that a disclaimer of rights to the exclusive use of the words ‘clear’ and ‘view’ would be appropriate, even though the word ‘view’ does not actually feature in the trade mark. In addition, the SCA felt that an endorsement to the effect that the registration would not stop others from ordinary descriptive use of the words ‘clear view’ and ‘view’ was also appropriate.
This judgment is regarded as important because there is very little jurisprudence in regard to disclaimers and other endorsements.