As lawyers, it is important that we keep ourselves abreast of case law. It provides us with guidance and consistency on the application of law from real matters.

At Stobbs, we have our very own ‘case law connoisseur’, Geoff Weller, a man with an encyclopaedic knowledge and a repertoire of cases from the UK and EU from classics to little known ‘one hit wonders’. At case law karaoke, I’d probably be limited to the Jif Lemon case and then I’d still get the chorus wrong!

Nevertheless, determined not to be outdone, I’m taking a look at some (mostly) recent case law with a spin. My practice focusses on matters in Africa, the Caribbean and the Pacific Rim and so I will take a look at decisions from Kenya, Namibia, Antigua and Barbuda, Singapore and New Zealand.

Non-fictitious disclaimers

A decision came out of Kenya in November last year regarding the mark MEMBER’S MARK in Classes 29, 30 and 32 in the name of Walmart Apollo, LLC (“Walmart”). The application was originally accepted subject to a disclaimer on “MARK”. This would mean Walmart have no rights to the exclusive use of the word “MARK” separately and apart from the mark as a whole. Walmart appealed with various arguments, notably that “MARK” is not descriptive in any way. They lost.

The Kenyan Supreme Court has previously stated, “[the] real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimize, even if it cannot wholly eliminate, the possibility of extravagant and unauthorized claims being made on the score of registration of the trade marks”.

In the UK, we treat marks as a whole and this has effectively made disclaimers redundant. They are, however, still requested in a number of countries, and commonly in East Africa. It’s good to remember that you can argue against a disclaimer – it is not a formality objection – but they will be difficult to avoid on a descriptive part of a mark.

Earlier user proves to be more than a pest

Rentokil Initial 1927 PLC (“RI1927”) v Demtschuk t/a Rentokil (“Demtschuk”) and Others is an older (2018) case from the Namibian Supreme Court. RI1927 is the South African arm of the major British pest control business.

Demtschuk starting using RENTOKIL in 1998. He undertook some due diligence, registering RENTOKIL as a defensive name with the Companies Registrar and contacting another business in the telephone directory under the name ‘Rent-O-Kill’ to establish this name was no longer being used by them and they had no intentions of using in the future.

It was in 2001 that RI1927 must have become aware of the use by Demtschuk as they sent a letter demanding he stop using RENTOKIL. RI1927 then applied to register their mark in March 2003, which registered seven years later (a not unheard of timescale in Namibia).

It was held that Demtschuk was the prior user and owner of goodwill in RENTOKIL and RI1927’s registration was cancelled.

This case highlights the territoriality of trade marks and the importance of clearance searches before entering a new market and not to discount common law rights.

It also demonstrates the close alignment of the South Africa market with the other countries of the Southern African Customs Union: Botswana, Eswatini, Lesotho as well as Namibia. Consideration should be given to clearing and registering marks in these if they will end up being an extension to the South African market for you.

While there may have been a conscious decision to try to stop Demtschuk’s use by being aggressive, careful consideration should be made before taking such an approach – know the rights position of both parties and the risks involved if your case is vulnerable.

Monster munch on descriptive words

Our case from Antigua and Barbuda dates from 2022 and involves an opposition from Monster Energy Company (“Monster”) to an application for SUPER CREATINE. The grounds were inter alia that the mark was descriptive for the goods in Classes 1 and 5, including dietary supplements.

The Registrar found in favour of Monster and the decision makes reference to a number of decisions we’re familiar with in Europe.

The application perhaps ‘slipped through the cracks’ during examination and should have been refused, but the decision shows that challenging these applications can be successful and that these will be robustly looked at.

Two threes don’t add up to Ten(a)

My case from Singapore is an opposition involving the mark TENA vs  issued in January this year. I’ve teased out one particular comment from the IP Adjudicator in this decision for comment:

It is noticeable that the vertical strokes in the letter “E” in the Application Mark are absent, which has the visual effect of substituting the Chinese character “三” (meaning the number “3”) for the letter in the mark. This effect would not be lost on the average consumer even when the possibility of his imperfect recollection is taken into account.

As someone who is not proficient in Chinese, this is not something that I would have been immediately drawn to. However, Chinese is a co-official language (along with English, Malay and Tamil) in Singapore and is the home language of roughly a third of its population who are mostly bilingual in English. It is important to consider the local market, an ‘average consumer’ in Singapore is a rather different person to that in the UK.

No success for the sycophant

Finally, we go to a decision in New Zealand. Here there are legal protections against any possible misappropriation of Māori culture or language, but this is a dispute involving two English language marks: RED NOSE DAY vs BROWN NOSE DAY.

Red Nose Day events have taken place in the UK since the 1980s and have since spread to other English-speaking countries. It’s owned by different entities worldwide, with the British charity having protection in the UK, US and Canada.

This opposition was brought jointly by Cure Kids and Red Nose Limited. They own the RED NOSE DAY registrations in New Zealand with the latter owning Australian rights solely in their name.

BROWN NOSE DAY was filed by National Cancer Foundation Limited in respect to “Charitable fundraising with respect to the awareness, treatment and research into bowel cancer.”

The opposition was ultimately successful under three grounds:

• It was a similar trade mark for similar services and its use is likely to deceive or confuse;
• An absolute grounds of refusal that: the use of which would be likely to deceive or cause confusion. The policy here is to protect the public interest rather than protect competitors;
• It was a similar trade mark to a well known trade mark in New Zealand and its use would be taken as indicating a connection in the course of trade between the services and the earlier rights holders, and would be likely to prejudice the interests of them.

The absolute grounds objection is interesting. While we have a similar provision in UK law – “a trade mark shall not be registered if it is of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service)” – this is extremely unlikely to have won the day here.

My view is that an equivalent opposition, if properly evidenced, would have prevailed in the UK under the final ground – there was a reputation in RED NOSE DAY that BROWN NOSE DAY took advantage of, or BROWN NOSE DAY was detrimental to that reputation. We also think a likelihood of confusion grounds has legs, although my aforementioned colleague, Geoff, has pointed out The White Company being unable to defeat The Black Company (arguably a far weaker mark).

This said, the UK charity did not oppose a UK equivalent application. They did not even extend the opposition deadline. Perhaps the advice they received was they would be unsuccessful or they felt unable to compile suitable evidence. Likewise, no action was taken in Ireland.

They did think about opposing in the US as they obtained an extension of the opposition deadline but did not go ahead with an opposition. However, they did oppose in Canada and won by default as the applicant did not defend. I’m curious as to why different paths were taken.

In Australia, Red Nose Limited do not appear to have opposed in time. This points to the value of setting up a trade mark watch. However, there is now court action pending and they have instigated proceedings to cancel the registration and so it has ended up being a meaty dispute.

No offence

One of the grounds that failed in the New Zealand opposition was “registration would be likely to offend a significant section of the community”. Like the British, it would seem the Kiwis are not easily offended with the Hearing Officer noting the use of the mark in relation to the claimed services would be in poor taste but wouldn’t meet the high bar to be offensive to “right thinking members of society”.

It can be a disparate world

As trade mark experts, we’re regularly dealing with matters in a diverse range of countries for our clients. The approaches taken elsewhere do not always go the way we would expect them to if they were in the UK. It is imperative to understand legal and cultural differences, sometimes very subtle and sometimes not, to enable us to help our clients navigate the world of trade mark protection.