Prof. Sizwe Lindelo SNAIL ka Mtuze
“Trademarks and Resolving domain name
disputes in South Africa”
Cyberlaw – Fort Hare – 5 April 2022
Introduction and Overview of
Lecture :
1. Trademarks
2. WIPO cases
3. Overview: The road leading to the first
domain name decision
4. The DOMAIN DISPUTES Website
5. The ADR Process
6. Decided South African Domain Name
Disputes
BASIC OVERVIEW - South African Trademarks
• - Common Law Trademarks
• - Registered trademarks
• - Infringement of trademark and Passing Off
• Common Law Trademarks
TM
• Non Registration of Trademark does not mean one dos
not own a Trademark
• Unregistered trade marks may be defended in terms of
common law
Difference:
• Registered Trademarks
• A trade mark can only be protected as such and
defended under the Trade Marks Act, 1993 (Act 194 of
1993) if it is registered.
• The registration procedure results in a registration
certificate which has legal status, allowing the owner of
the registered trade mark the exclusive right to use that
mark.
Infringement of Trademark
• In terms of Section 34 (1) (a), (b) and (c) of the
Trademarks Act :
• Infringement can take place in the forms :
Direct Infringement,
Unlawful use and
Dilution of Trademark.
• Passing Off:
‘Passing off occurs when A represents, whether or not deliberately or intentionally, that its
business, goods or services are those of B or are associated therewith. It is established
when there is a reasonable likelihood that members of the public in the marketplace
looking for that type of business, goods or services may be confused into believing that
the business, goods or services of A are those of B or are associated with those of A’
NB :Capital Estate and General Agencies (Pty) Ltd v Holiday Inns Inc. 1977 (2) SA 916
(A) at 929C
Requirements necessary for the applicant to establish passing-off :
A - The applicant must prove the existence of the requisite reputation; namely that its getup or mark has become distinctive of its goods or services, in the sense that the public
associate the get-up or mark with the goods or services of the applicant.
B - There must be an express or implied representation by the offending party which is
false and unauthorised;and
C -The applicant must prove that the representation made by the offending party is likely
to cause confusion amongst purchasers or potential purchasers of the products as to the
trade source of the product or the business connection thereof.
SAB v Laugh it OFF Case – NB
Laugh It Off Promotions CC v South African Breweries International (Finance)
B.V. t/a Sabmark International CCT 42/04
• Freedom of Expression vs Ownership of a Trademark and Fair use Trade Mark for Artistic Use vs Trade Mark Infringement
•
Sabmark International (Sabmark) holds trade marks that it licences to SAB Ltd for
use on beer bottles and related products. One of the trade marks states: “America’s
lusty, lively beer Carling Black Label Beer Brewed in South Africa”.
•
In 2001 Sabmark discovered that Laugh It Off Promotions CC (Laugh It Off) was
producing and selling T-shirts that lampooned the trade mark by stating: “Africa’s
lusty, lively exploitation since 1652 White Black Labour Guilt No regard given
worldwide”.
WIPO CASES -Own Reading :
• NB : Read relevant Chapter in the text book
dealing with WIPO CASES (UDRP)
• AND : Also read additional Article send on WIPO
(UDRP) disputes.
• Outcome : Understand the requirements under
the WIPO (UDRP) for domain name disputes.
( You may have a foreign case one day and
must be ready )
Overview: The road leading to the
first domain name decision
– ECT Act (August 2002)
• Chapter 10, Part 6
• DOC in consultation with DTI must establish an ADR process for the .ZA
namespace
• Develop Regulations with due regard to international precedent
– Regulations (November 2006)
• Concepts of an Abusive and Offensive Registration
• Stipulate basic Procedure for administration of Disputes
• Accreditation of ADR Providers
– Accreditation of the SAIIPL (February 2007)
• Conclusion of a Service Level Agreement with ZADNA
• 2 (two) year term
– Establishment of DomainDisputes.co.za (March 2007)
– First Case Decision (June 2007)
THE DOMAINDISPUTES.CO.ZA - WEBSITE
General Objectives:
• Provide an Administrative
Framework for the
administration of domain
name disputes
• Provide useful resources,
information and assistance
for interested Parties.
•Assistance with lodging
dispute
•Provide a logical precedent
base
• Promote awareness of
domain name related matters
by publishing important news
and local domain name
decisions
• Promote an image of
neutrality.
(SAIIPL:2008)
The ADR Process
• Grounds for Filling an ADR complaint
The ADR Regulation makes provision for a domain name complaint to be
instituted against domain names and their registrant that , take unfair
advantage of the rights of a trade mark owner, are contrary to law, give
offence to any class of persons, amount to hate-speech , racism or could be
considered to be contrary to public policy.
•
ABUSIVE REGISTRATION
Complainant has rights in name / mark that is identical or similar to
that of registered domain name of registrant and / or
•
OFFENSIVE REGISTRATION
Registrant has registered a domain dame that that is offensive
Factors indicating Abusive or Offensive
registration:
ABUSIVE REGISTRATION
• Circumstances indicating that registrant registered domain name with sole
aim of depriving , selling to ( over out-of pocket expenses ) or to rent to
the rightful holder of rights or to the competitors of the holder in the said
rights, intentional business disruption and blocking of rightful holder of right
from registering domain name.
• Unlawful passing-off of trademarks / Typo squatting ( registered and unregistered )
• Evidence is presented together with other evidence that registrant has
engaged in a pattern of abusive registrations
• Provision of false and / or incomplete information on the WHOIS database
OFFENSIVE REGISTRATION
• Registrant has registered a domain dame that advocates, racism, hate
speech, gender inequality, attack on religious beliefs, incitement to
cause harm or other contra bonus mores grounds
Factors indicating that registration is
not Abusive nor Offensive
ABUSIVE REGISTRATION
• Before being aware of complaints cause for complaint registrant has:
(a)
Used or made demonstrable preparation to use domain name in
connection with a good faith offering of goods and / or services
(b)
Been commonly known by the name or connected with mark which is
identical or similar to that of the domain name
(c)
legitimate non-commercial or fair use of the domain name
• Domain name is used generically or descriptive words have used in fairly
• Registrant has demonstrated fair use (incl. fair comment and fair criticism )
•OFFENSIVE REGISTRATION
• Fair comment and / or fair criticism
FILLING A DISPUTE
NB:
1. COMPLAINANT
MUST ENSURE
THAT THE
COMPLAINT
COMPLIES WITH
THE ADR REG.
2. IN CASE OF NONCOMPLIANCE
AFTER NOTIFICATION
BY ADMINISTRATOR,
COMPLAINANT MUST
ENSURE COMPLIANCE
WITHIN 5 DAYS OF
NOTIFICATION OR
DISPUTE DEEMED
WITHDRAWN
3. IN CASE OF NONPAYMENTOF FIXED
FEE, COMPLAINANT
MUST ENSURE PAYMENT WITHIN 10 DAYS
OF THE DISPUTE BEING
FILLED OR
DISPUTE DEEMED
WITHDRAWN
FILLING A RESPONSE
NB:
A REGISTRANT
MUST FILE HIS
RESPONSE
WITHIN 20 DAYS
OF RECEIPT OF
COMPLAINANTS
COMPLAINT
FILLING A REPLY
• WITHIN 5 (FIVE) DAYS OF RECEIPT OF REGISTRANT’S RESPONSE
• NO PARTICULAR FORMAT BUT IT MUST ALSO COMPLY WITH ADR
PROVIDER’S SUPPLEMENTARY PROCEDURE
• AFTER 5 (FIVE) DAYS THE ADMINISTRATOR WILL APPOINT AN
ADJUDICATOR
• ARBITRATOR MUST MAKE HIS / HER DECISION WITHIN 14 DAYS OF
HIS OR HER APPOINTMENT ( EXTENSIONS MAY BE GRANTED ON
GOOD CAUSE )
Complainant
4
4
1
2
1
3
4
4
Adjudicator
1
4
2
3
Registrant
(SAIIPL: 2008)
FLOW CHART FOR .co.za DOMAIN NAME DISPUTES
COMPLAINT
- lodged in paper format, in triplicate
and electronic format
- comply with formalities in Reg
16(2), Supp Rule 9(a)
PROVIDER
- check compliance
YES
-
NO
notify registrant of compliance
notify
complainant,
registrant,
second level domain administrator
and
Authority
of
date
of
commencement of dispute
RESPONSE
- within 20 days of commencement of dispute
- lodged in paper format, in triplicate and
electronic format
- comply with formalities in Reg 18(2), Supp
Rule 9(a)
REPLY
- within 5 days of receiving response from
provider
- in paper and electronic format
-
notify complainant
5 days to correct or deemed withdrawn
if fee not paid within 10 days of receipt
of
dispute
by
provider,
deemed
withdrawn
DEFAULT
- appoint
adjudicator
proceed to decision
to
DEFAULT
- appoint
adjudicator
proceed to decision
to
APPOINT ADJUDICATOR
- upon expiry of 5 days, but no later than 2 days thereafter
DECISION
to be forwarded to provider within 14 days of appointment
COMMUNICATION OF DECISION
- within 3 days of receiving decision from adjudicator, to parties and Authority
- after 5 days of notifying parties and Authority, to second level domain administrator
(SAIIPL: 2008)
DECISIONS OF THE ARBITRATOR
An Arbitrator may make the following decisions :
• REFUSE DISPUTE ( e.g. No merits in claim, reverse domain name high jacking
etc.)
• TRANSFER DOMAIN NAME ( e.g. Cyber squatting, Passing off ,Typo Squatting etc.)
• MAKE SETTLEMENT A BINDING DECISION ON PARTIES
IMPLEMENTATION OF DECISION
•
•
Second level domain administrator to wait 5 days after receiving decision from provider
Implementation within 2 days after 5 day waiting period
APPEAL
•
•
•
•
•
•
•
•
Statement of Intention to Appeal within 4 days of notification
Appeal Notice within 15 days after Statement of Intent
comply with formalities in Reg 32 (2)(3)(6), Supp Rule 10
provider to forward Statement of Intent and Appeal Notice within 3 days of receipt
Appeal Notice Response within 10 days from receipt of Appeal Notice
panel appointment
decision to be forwarded to provider within 20 days of appointment of last adjudicator
notification and implementation (see above)
•
NB : Either party to proceedings may refer a dispute to the High Court for
determination , appeal and or review.
NB: De Rebus → Issues → April 2019 → Domain name
disputes – a discussion of SAIIPL adjudicated disputes –
S.Snail ka Mtuze and V.Gumede
• African National Congress v Unwembi Communications (ZA20180350, 31-1-2019),
• the domain name dispute platform is not being used efficiently
enough to protect the rights of trade mark owners,
• due to the lack of knowledge by their legal representatives and
themselves on how to prepare and argue domain name disputes.
• The frustration that the African National Congress (ANC) had
experiences before the domain name adjudicator in recovering its
domain name – due to insufficient evidence – is a predicament no
bona fide owner of a trade mark or anyone with a right in a domain
name should have to bear (see Mxit Lifestyle (Pty) Ltd v Andre
Steyn (ZA2008-0020, 30-9-2008)).
Interesting Decided Cases:
www.Growthpoint.co.za
Facts:
• In the case of Growthpoint Properties Ltd v Alex Modisane (ZA20150218, 8-1-2016) the issue of proving ownership of a trademark was
an important issue
• In this dispute, which was lodged with the SAIIPL, Growthpoint
Properties was the proprietor of a number of trade marks registered
during the course of 2007 and in relation to a range of services,
including valuation, insurance and advertising.
• Mr Alex Modisane had registered www.growthpoint.co.za as a result
of a compnay he had registered several year back called Growth on
Point.
Decision :
• Growthpoint Properties submitted that the www.Growthpoint.co.za
domain name registered by Mr Modisane was confusingly similar to its
registered trade mark GROWTHPOINT and that Mr Modisane had
registered the disputed domain name in relation to the same services as
those of Growthpoint Properties. A distinguishing aspect of this dispute is
that Growthpoint Properties admitted to having no proof that Mr
Modisane was aware of its Growthpoint trade marks when he registered
the domain name.
• The adjudicator in making a decision to refuse the dispute, found that
Growthpoint Properties had been unsuccessful in proving the elements
constituting abusive registration in terms of regs 3, 4 and 5 of the ECT
Act. It was also found that the services offered by the parties respectively
were not identical or similar; and that there was no evidence to suggest
that GROWTHPOINT is a well-known trade mark in SA.
Interesting Decided Cases:
www.Mrplastic.co.za
Facts:
The Complainant is Mr Plastic CC. The Registrant is Mr. Plastic & Mining Promotional
Goods. The Complainant allowed the Registrant and several others to use the trade
mark MR PLASTIC & Device and the trading style "Mr Plastic". The trade mark is not
registered. The Registrant uses the domain name mrplastic.co.za. The Complainant has
used its name and trade mark MR PLASTIC for 27 years and has a substantial
reputation. The Registrant has used the trade mark and trading style MR PLASTIC for 18
years.
Decision:
A company or domain name registration does not necessarily give a Complainant rights
in a name. If there is a reasonable likelihood that members of the public may be
confused to believe that the business of the one is or is connected with the business of
the other, it amounts to passing off. Complainant did not make out a case of passing off.
Interesting Decided Cases
www.seido.co.za
Facts :
• In Allstates Global Karate Do, Inc d/b/a World Seido Karate
Organization v Saids Karate (Suliman Said) (AP2009-0030, 2-122009) a complaint was lodged with the South African Institute of
Intellectual Property Law (SAIIPL) by Allstates Global Karate against
one Mr Suliman Said for the latter’s use of the www.seido.co.za
domain namestates had registered the www.seido.com domain
name during the course of 1996, whereas Mr Said’s .za domain
name was registered five years later.
• It was common cause that a relationship in the form of a licensing
agreement between the parties had conferred rights on Mr Said to
conduct karate courses,
Decision:
• – Allstates did not hold an exclusive right on the trade mark SEIDO
in SA and that registration of the domain name in the United States
did not give Allstates rights protection under South African law.
• – The licensing agreement between the parties did not, in itself,
create any rights for Allstates to be protected in terms of South
African law.
• – There was no evidence that the SEIDO trade mark was registered
at the time of the licensing agreement.
• – The only reputation of the name SEIDO happened as a result of
this trade mark being registered by Mr Suliman in SA.
• – Allstates failed to prove – on a balance of probabilities – that it had
a right in respect of a mark that is identical/similar to the domain
name and that the domain name registration was not abusive.
Interesting Decided Cases:
www.phonebook.co.za
Facts:
• Telkom SA Limited and TDS Directory Operations (PTY) Limited are the
First and Second Complainants. The Internet Corporation is the Registrant.
First Complainant is the registered trade mark holder of PHONE BOOK.
Second Complainant publishes a phone directory entitled “The Phone
Book”.
• The domain name <phonebook.co.za> does not currently link to a web site
but the domain name <whitepages.co.za> links to an active web site
www.whitepages.co.za. Complainant's registered trade marks are
specifically endorsed to say that the Complainant does not have exclusive
rights to the words “PHONE” and “BOOK”.
Decision:
• Procedural objection: Registrant challenged the decision that the
Regulations reply retrospectively, but the Adjudicator finds that Registrant is
contractually bound to the proceedings and the Regulations apply
retrospectively.
• Rights in the mark: First Complainant has registered rights in respect of
the trade mark THE PHONE BOOK logo. The Adjudicator rejects the
Registrant's argument that the preposition, that appears in the
Complainant’s mark, is not part of the domain name. Adjudicator also rejects
the argument that its domain name is not abusive, because the exact trade
mark of the First Complainant, namely thephonebook.co.za has been
registered by a third party.
• The Adjudicator finds that the Registrant has rights and a legitimate interest
in the disputed domain names because he was the first to register them and
he provided ample evidence of the generic nature of the two marks.
Interesting Decided Cases:
www.Fifa.co.za
Facts:
•
Complainant is Fédération Internationale de Football Association (FIFA). FIFA is the worldwide
governing body of soccer and organises and manages the international soccer tournament,
officially called “FIFA World Cup” – watched by billions of viewers. FIFA is the registered holder of
numerous registered trade marks consisting of or incorporating the word FIFA in South Africa and
also internationally.
Decision:
•
FIFA is identical to the mark in which the Complainant has registered and common-law rights. The
burden of proof shifts to the Registrant to show that the domain name is not an abusive
registration.
•
The Adjudicator accepts the expert's finding in In chivasbrothers.co.uk: “Where a Respondent
registered a domain name :
1) which is identical to a name in respect of that which the complainant has rights;
2) where that name is exclusively referable to the complainant;
3) where there is no obvious justification for the Respondent having adopted that name for the
domain name;
4) where the Respondent has come forward with no explanation for having selected the domain
name, it will ordinarily be reasonable for an expert to infer first that the Respondent registered
the domain name for a purpose and secondly that that purpose was abusive."
Interesting Decided Cases:
www. absapremiership.co.za
Facts:
•
Complainant is ABSA Bank Limited. The Complainant is the registered holder of many
trade marks incorporating the ABSA mark. Complainant filed applications for the
registration of the trade mark ABSA PREMIERSHIP in various logo forms. The
Complainant is the largest commercial bank in South Africa and has branches or
automated teller machines in virtually every town in the country. ABSA is a famous
mark and the principal sponsor of the South African Soccer.
Decision:
•
The Complainant has acquired strong statutory and common law rights in the trade mark ABSA,
and has also acquired strong common law rights in the trade mark ABSA PREMIERSHIP. The
domain name <absapremiership.co.za> incorporates the Complainant’s ABSA trade mark and is
identical to the Complainant’s ABSA PREMIERSHIP common law trade mark. The Complaint has
rights in the mark ABSA and the mark ABSAPREMIERSHIP.
The Adjudicator finds that the registration was abusive.
•
Registrant admits that it was fully aware of the Complainant’s rights and interests in the name.
Registrant could not do anything by way of legitimate trade under the name ABSA PREMIERSHIP.
An attempt to conduct legitimate business would be deceptive. Registrant does not use the web
site. All of this indicates an abusive registration.
Interesting Decided Cases:
www.citroen.co.za
Facts:
Complainant is Automobiles Citroen, the French car manufacturer. The CITROEN trade mark is well
known in relation to motor cars. CITROËN is registered as a trade mark in South Africa.
The Registrant has been an enthusiast of Citroën cars since he was a young boy and still is. The
Registrant operates the web site solely in tribute to Citroën cars. The Registrant has made
no money from the web site. The Registrant admits that the Complainant has rights in respect of the
trade mark CITROËN, and that the domain name is identical.
Decision:
The onus is on the Registrant to proof that the domain name is not abusive.
The Adjudicator finds that there is (i) no evidence to indicate an intention by Registrant to block the
name, sell it, disrupt business of Complainant unfairly or prevent it from organising its rights; (ii) no
indication of a pattern of abusive registrations or incomplete whois database details; (iii) nothing to
indicate the Registrant has used the name in a way to make people believe that it is being operated by
the Complainant.
When some one appropriates the mark of another it must be in a manner that can not create any
doubt. citroen.co.za does not meet this criteria. Registrant could have registered a name like
ilovecitroen.co.za, but does not explain why he did not. Registrant also could have asked Citroen
whether they would mind if he used the name. Registrant has not rebutted the onus of proof.
Q&A
Contact Your Lecturer:
Sizwe Lindelo Snail ka Mtuze
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