Browsing by Author "Karjiker, S."

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    Is South African trademark law out of shape? A comparative analysis of shape marks, in light of the recent SCA and CJEU Kit Kat decisions
    (Juta Law, 2016-12) Hobson-Jones, S.; Karjiker, S.
    This article examines the recent litigation concerning the shape of the Kit Kat chocolate bar in South Africa, Europe and the UK in order to determine whether the South African legal position relating to shapes as trademarks differs from that in Europe and the UK, given the fact that the respective legislation is substantially similar. The Kit Kat shape-mark cases provided a unique opportunity to determine if South African law in this area differs as it concerned the same basic set of facts. Given the legislative similarities, it would be logical to assume that a consistent result would follow. However, despite the legislative similarities, the SCA decision in the Kit Kat case appears to be inconsistent with the European and UK decisions. The first area of possible difference is the scope of the “technical result” exclusion from registrability as a trademark. While South Africa may consider the exclusion of a registration on the basis of a technical effect in relation to both the manufacturing process and the end-use of a good, only technical effects concerning the end-use are relevant in Europe and the UK. Second, the SCA held that the “technical result” exclusion only applies if the shape consists “exclusively” of a shape necessary to obtain a technical result, and, thus, will not apply if a shape has both functional and non-functional features. In contrast, in Europe and the UK a registration will be denied if any of the “technical result” exclusions apply to any feature, even if there may also be a non-functional element. Finally, the SCA appears to have adopted a lower standard for distinctiveness. It was sufficient if the average consumer recognised the Kit Kat shape and associated it with Nestle. However, in Europe and the UK the shape will only be distinctive if the consumers rely on the shape as a badge of origin.
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    The role of reputation in trade mark infringement
    (Juta Law, 2018) Karjiker, S.
    The recent decision of the supreme court of appeal in PepsiCo v Atlantic Industries illustrates our courts’ failure to properly engage with the issue of the reputation of a trade mark in the assessment of whether there has been trade mark infringement, and to provide guidance in respect of the effect it may possibly have in assessing whether there is a likelihood of deception or confusion.1 There appears to be a lopsided approach to the issue of the reputation of a trade mark between the application of sections 34(1)(a) and (b), on the one hand, and, section 34(1)(c), on the other hand, of the Trade Marks Act (the act).2 As will be illustrated in this article, while the reputation of a trade mark is central to a trade mark infringement claim pursuant to section 34(1)(c), the possible effect of a trade mark’s reputation for an infringement claim pursuant to sections 34(1)(a) or (b) is less than clear. This article identifies a possible reason for the unsatisfactory manner in which the reputation of a trade mark features in South African trade mark infringement claims – more particularly, in relation to sections 34(1)(a) and (b) – and seeks to provide an appropriate area in which the reputation of a trade mark may have a role in the assessment of trade mark infringement claims.