• The link between passing off & provenance – Guest Post

    Darren Margo
    Afro-Corne is delighted to receive this handy synopsis on recent case law on passing off from the desks of Darren Margo and Natalie Hill of Margo Attorneys. In this post the authors pick up on the recent Supreme Court of Appeal judgment in South Africa in Herbal Zone v Infitech Technologies which covers that situation where an ex distributor turns competitor, and what is then required to stop that business selling products bearing the same name. It is also a reminder on the importance of registering a trade mark. Read on:
    Natalie Hill
    There have been a number of cases recently dealing with “passing off”, being Global Vitality v Enzyme Process Africa (2015), Pioneer Foods v Bothaville Milling (2014) and Herbal Zone v Infitech Technologies (2017). In each of these cases, the court has dealt with the requirements that need to be satisfied in establishing a successful claim of passing off. These remain unchanged in the latest series of 3 judgments: the successful applicant must show that he has a reputation in the goods and/or services, that the Respondent has misrepresented to the public that its goods and/or services are the same as those of the Applicant and that due to this misrepresentation, the Applicant has suffered damages.

    In both the Enzyme and Pioneer Foods cases, the court found that the Appellants had sufficiently proved that they had a reputation in their various products. However, in the Herbal Zone case before the Supreme Court of Appeal (SCA), the Appellant was not successful – it is an interesting exercise to explore why. To be frank, however, the Herbal Zone judgment was coloured more by the paucity of evidence than it was by any issue relevant to passing off – but where that judgment does present something new and interesting is in the issue of provenance, as we explore below.

    In the Herbal Zone case, two issues were dealt with, namely passing off and defamation. For purposes of this article we will deal only with the matter of passing off. In a nutshell, the Appellant argued that the Respondent was guilty of passing off its product PHYTO ANDRO FOR HIM – a herbal supplement. The Respondent had originally been a distributor for the Appellant of the product in question, but this relationship came to an end in 2014 whereupon the Respondent decided to import and distribute a similar product itself and market it under the same name. The evidence that was led by the Appellant created some confusion as to which company held the rights and goodwill in the product. Several players were involved in a confusing, veritable rabbit warren of intersecting rights and allegations. To complicate matters further, neither of the parties had attempted to register the trade mark PHYTO ANDRO FOR HIM before this matter went to court. It appears that only once the relationship had soured between the parties did they both attempt to register the trade mark. [This issue, of which party can lay claim validly to the trade mark, now lies before the Trade Marks Office Tribunal]. Before the SCA, neither party could lay claim to the reputation vested in the trade mark because neither party had proprietorship of the trade mark. As a result, the court then had to look at the issue of provenance. In other words, which company is the primary source of the products in question?

    This was the second critical issue that had to be dealt with by the SCA. It deduced from the evidence that the goodwill in the product vested in Herbal Zone International as this company is ultimately where the product originated. To summarise the detail: while one of the Appellants was able to demonstrate that he was the proprietor of another of the Appellants, he could not demonstrate, on the evidence, that the Appellants had built-up goodwill and a reputation in the product. Accordingly, the first hurdle to proving passing off could not be overcome – and the matter ended there.   

    The important element to be crystallised from the Herbal Zone judgement is how the courts may rely on the issue of provenance when deciding on the matter of reputation. This places tremendous pressure on the Applicant, if it does not have proprietorship of the trade mark relating to the goods and/or services in question, to show that it has a clear and direct link to those goods and/or services by way of being the source or origin of those goods and/or services. Finally, on this point, it was very interesting to note that the SCA cited, with approval, the view expressed by Webster & Page that, in some circumstances, a person who is not the proprietor of certain goods can still acquire a reputation as indicating that they emanate from him: in which case the goodwill adhering to that name or get-up will vest in him (typically: a distributor of those goods).

    Handy indeed, thanks Darren & Natalie


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  • Conference & CLE Calendar

    July 6, 2017 – “Lessons from PTAB Full or Partial Denials to Obtain a Denial and Avoid an IPR” (Strafford) – 1:00 to 2:30 pm (EDT) July 11, 2017 – “Promises, Promises” (Bereskin & Parr) – 1:00 to 2:00 pm (EDT) July 13, 2017 – “Labeling and Induced …

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  • BUCKLE 曲げる・座屈する


    BUCKLE 曲げる・座屈する


    $$ If a mass of the pump is relatively low, the axial compressive force on the bellows 60 may be sufficient for the bellows to buckle. / ポンプの質量が相対的に低い場合、蛇腹60に加わる軸方向圧縮力が、蛇腹を曲げるのに十分なものである可能性がある。(USP8322694)

    $$ This means that buckling induces a stress release at the interface between the panel and the stringer. / これは、座屈がパネルと縦通材の間の境界で応力放出を誘発することを意味する。(USP8302486)

    $$ Preferably the buckling capacity of the wind turbine tower is increased by the use of internal stiffening rings. / 風力タービン塔の座屈能力は、内部の強め輪の使用によって増大させることが好ましい。(USP8201787)

    $$ The invention relates to safety pressure relief devices, and more particularly to reverse buckling discs which are designed to rupture reliably at relatively low pressures. (USP7234481)

    $$ When a large predetermined force is applied between pale and the rail, the pale buckles along the indentation. (USP6767005)

    $$ Applying water to the center 14 may loosen the adhesives in the cardboard center 14 and result in its buckling. (USP6179235)

    $$ The most straightforward way to prevent diaphragm buckling, is to perform grinding of the wafers, before etching cavities and diaphragm formation. (USP02045287)


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  • Overview of the JOBS Act about Equity Crowdfunding and Success Stories

    The University of Memphis Cecil C. Humphrey’s School of Law law magazine (Spring 2017) has an excellent and concise five page overview articleconcerning the JOBs Act and crowdfunding.  The article describes three types of equity crowdfunding under the Act and discusses the related regulations.  The article notes that, “As of this writing, there were over 20 debt and equity crowdfunding platforms, with 186 companies having launched a campaign through them, and with 79 of those companies hitting their minimum funding target.”  Apparently, $19 million was raised for the 186 companies.  Interestingly, the real estate sector is a strong participant in crowdfunding. One success story described in the article concerns Zenefits, a human resources services company for smaller entities which notably raised $300,000 “on Wefunder.com at a $9 million valuation in March 2013; [r]aised $15 million at a $70 million valuation in January 2014; [r]aised $66 million at a $500 million valuation in June 2014.”  The second interesting story concerns Elio Motors, which raised $16 million on “StartEngine from 6,600 investors in early 2016.”  According to the article, Elio Motors has an over $1 billion valuation. 

    The article points to Indiegogo (“movies, games and tech gadgets”) as an equity crowdfunding platform that “is expected to bring millennials” into the game.  Indiegogo’s website notes that over $1 billion has been raised over 650,000 projects in 222 different countries since 2008.  Indiegogo’s equity crowdfunding platform is called, First Democracy VC, a partnership with MicroVentures.  The First Democracy VC website apparently went live in December of 2016 and a couple of companies have raised a half million dollars (US) or more. 

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  • Lifting the Bar: Federal Circuit finds that the PTAB improperly allowed Amendments during IPR

    Shinn Fu vs. Tire Hanger (Fed. Cir. 2017) After receiving substantial criticism for refusing to allow claim amendments during Inter Partes Reviews (IPRs), the USPTO began to to relax its standards somewhat.  In this case, however, the Federal Circuit (C.J. Prost) has rejected the PTO’s expanded approach – holding that “the Board did not properly consider […]

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  • Sheer Driving Pleasure: Trade Mark Law Through The (BMW) Cases

    The Prof
    Prof Wim Alberts contacted our resident rhino to post this piece in which he traverses the African savannah, English countryside and Swedish fjords to establish the true meaning of trade mark infringement, in a beemer. This, prompted by the latest BMW decision to emerge from the UK, just last month. Enjoy the ride:


    A newcomer to the South African trade mark scene can do much worse than to start off his or her career by analysing all cases involving BMW.  This company aggressively enforces its trade mark rights, and we also benefit from it.  Its cases have often clarified legal points or made new law, also in other areas such as design law.  Apart from other decisions dealing with descriptive use etc, first place must go to the Verimark case however.  Many years ago there was the much-talked-about McDonald’s judgment, a few years ago the Laugh It Off decision was (unfortunately?) dominant, and the most worrisome ruling to the trade mark community.  But Verimark is now truly “well-known”.  And, of course, the vital passage in paragraph 7, known by heart by many candidate-attorneys:

    “What is, accordingly, required is an interpretation of the mark through the eyes of the consumer as used by the alleged infringer. If the use creates an impression of a material link between the product and the owner of the mark there is infringement; otherwise there is not.”

    Here the court made clear what the test for primary infringement is, and also what the role of the origin function/use as a trade mark in our law is (as clarified later in paragraph 3 of the Commercial Auto Glass ruling).  And Verimark, in paragraphs 13-14, also provided guidance on certain dilution aspects – to what is left of our law in this regard after the Laugh It Off judgment.  

    United Kingdom


    From the recent British case in Bayerische Motoren Werke Aktiengesellschaft v Technosport London Limited it appears that the vigorous enforcement of BMW trade mark rights is a trend that can also be found in other countries. 

    The Antogonist

    BMW’s remaining allegations of infringement of the BMW mark concerned the use of the mark in conjunction with the other side’s trading name “Technosport”.  There were three such instances:


    ·        Shirts – the leading light behind Technosport wore shirts with Technosport and the BMW mark on it in various forms


    ·        Twitter account – Technosport had a Twitter account with the user name “@TechnosportBMW”


    ·        The van – Technosport owned a van used in its business with the words TECHNOSPORT – BMW across the top

    In relation to the law, the court had regard to Bayerische Motorenwerke AG v Deenik [1999] ETMR 339, where the European Court of Justice was asked whether advertisements such as “Repairs and maintenance of BMWs”, constituted infringement of a BMW trade mark under Directive 89/104 to approximate the laws of the Member States relating to trade marks.  The court answered that question in the following way at paragraph 64:

    “In the light of the foregoing, the answer to be given to the fourth and fifth questions must be that Articles 5 to 7 of the directive do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the sale or the repair and maintenance of such goods, unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller’s business is affiliated to the trade mark proprietor’s distribution network or that there is a special relationship between the two undertakings.”

    The court stated the central problem as follows (para 18, emphasis added):

    “I accept that one cannot start, in a case such as this, from the proposition that any use of the BMW Mark in the course of a business specialising in the repair of BMWs would be an infringement. Use of the mark is necessary and legitimate in order to explain to the public what the business in question actually does. Thus, by way of example, BMW rightly took no objection to the use by [Technosport] of the slogan ‘The BMW specialists’ on the facia of their old premises, separated from the name identifying the business, namely Technosport. Equally, one cannot start from the proposition that the use of BMW in relation to a motor car repairing service can never be an infringement. The mark is, after all, registered for that very service. The distinction is between uses which convey the true message “my business provides a service which repairs BMWs and/or uses genuine BMW spare parts” and those which convey the false message ‘my repairing service is commercially connected with BMW’. Which of these messages is conveyed depends on a close consideration of the detail and context of the use. For convenience I call the former message ‘informative use’ and the latter ‘misleading use’.

    Nevertheless, the Roundel was excluded: “I have, however, considered what message the van would convey in the absence of the Roundel, as that is the issue which now divides the parties.”  The court found that the average consumer will see the trading style to have an official link.  One reason is that there is nothing in the sign TECHNOSPORT-BMW to indicate that the sign is being used informatively. Although phrases such as “BMW repair specialist” clearly informs the average consumer to the nature of the business, the inclusion of BMW into the trading style does nothing of that kind. It would have been easy to state “BMW repair specialist”, distinct from the word BMW (para 28). 

    Also, “the presence of a risk of the kind in question does not depend on it being the universal practice of authorised distributors to use that trading style, although of course many did. The risk exists because the use of a trade mark within a trading style in this way, and without further explanation, is naturally taken by the average consumer as an identifier of the business and the services it provides.” (para 31).

    Infringement was also found in relation to use on shirts and in the twitter address.


    The principle that can be derived from the case is that you may describe your type of business with some reference to a trade mark.  However, a third party’s mark should not be used in a manner that creates the impression of the existence of a formal association.  This the court found occurred due to the link made between the name of the business and the BMW trade mark.

    It would seem that one may say you are “Specialising in BMWs” or a “BMW Specialist”.  How is it ascertained though that someone is a specialist?  In the medical field for instance, the specialist factually specialises in one field, but also has a formal qualification.


    To provide a proper perspective on the matter, a brief Swedish excursion is perhaps apposite.  In Aktiebolaget Volvo v Heritage (Leicester) Limited [2000] FSR 253, the respondent was an authorised Volvo dealer for a number of years.  After the termination of the dealership agreement, the mark was still used on signage, prominently, in the format “Independent Volvo Specialist.”  The mark was also used on letterheads.  Reliance was placed on a provision protecting descriptive use.  It was accepted that the use was intended to indicate the purpose of the service.  The question that the court however had to consider was whether the use was in accordance with honest practices in industrial or commercial matters.  In this regard it was held (page 263) that:

    “In my judgment the defendant’s use of the word ’Volvo’, comprising the registered trade mark of the claimants, in the context of its having previously for so long been an authorised dealer of Volvos, was calculated to cause at least confusion in the minds of consumers, and probably, indeed, also the belief that there was still, to put it at its lowest, some trading connection between the defendant and Volvo.”

    The court had particular regard to the Deenik case.  It was said (page 264) that a proprietor cannot prevent a third party from using his trade mark for informational purposes.  However, the position would be different if the impression is created that there is a commercial connection between the party and the proprietor, and in particular that the reseller’s business is affiliated to that of the trade mark proprietor’s distribution network. 

    The important principle stated by the court was (page 265) that the defendant could properly describe himself as a Volvo service specialist, on condition however that a distinction be made between his status as such and that of an authorised dealer.  The matter is then seemingly not controversial, because in the Technosport judgment the court (and BMW) had no problem with the use of “BMW repair specialist” (para 28).


    Thanks to the Prof …


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  • CAFC in Shinn Fu: an obligation to consider arguments presented to the tribunal

    The outcome of Shinn Fu (2017 U.S. App. LEXIS 11787 (July 3, 2017 ) ):

    This appeal arises from an inter partes review (“IPR”)
    of U.S. Patent No. 6,681,897 (“’897 patent”) in Inter
    Partes Review No. IPR2015-00208. In that proceeding,
    the Patent Trial and Appeal Board (“Board”) granted the
    patent owner’s motion to amend and held the substitute
    claims patentable. Because the Board did not properly
    consider the arguments petitioner set forth in its opposition
    to the patent owner’s motion to amend
    , we vacate
    and remand.

    The issue related to amendments in IPR:

    In broad terms, aside from specifying the order in
    which to perform the recited steps, these amendments
    added human involvement to steps that an apparatus or
    other structure could have otherwise performed. Tire
    Hanger accompanied these amendments with arguments
    in favor of patentability for the newly presented claims.
    Specifically, it presented its arguments in view of the
    prior art upon which the USPTO based its institution
    decision and recently discovered prior art references not
    of record. J.A. 152–63. Shinn Fu opposed and presented
    arguments of unpatentability with regard to the references
    Tire Hanger identified in its motion and two additional
    references: U.S. Patent No. 4,976,336 (“Curran”)
    and U.S. Patent No. 4,650,144 (“Conrad”). J.A. 170–94.
    After the parties presented oral argument, the Board
    concluded that the amended claims were patentable in
    light of the prior art of record and granted Tire Hanger’s
    motion to amend. J.A. 27. It reached this conclusion after
    characterizing the focus of the parties’ arguments as
    being limited only to the Komorita, Heidle, and Conrad
    references. J.A. 20. Shinn Fu timely appealed. We have
    jurisdiction under 28 U.S.C. § 1295(a)(4)(A) (2012).

    The principal issue on appeal is whether the Board
    erred by not adequately addressing Shinn Fu’s arguments
    in opposition to Tire Hanger’s motion to amend. We
    review the Board’s IPR decisions to ensure that they are
    not “arbitrary, capricious, an abuse of discretion, . . .
    otherwise not in accordance with law . . . [or] unsupported
    by substantial evidence. . . .” 5 U.S.C. § 706(2)(A), (E).

    More specifically

    Throughout its analysis, Shinn Fu described various
    prior art references and, more importantly here, the
    particular manner in which to combine them. Specifically,
    the combinations Shinn Fu proposed, including the combination
    of Conrad and Curran that Shinn Fu emphasizes
    on appeal to this court, involve modifying the prior art
    references by adding features from particular references
    together. See, e.g., J.A. 180 (describing why one of ordinary
    skill would have taken the tire hangers disclosed in
    the Conrad, Marion, and Wuethrich references and attached
    them to a vehicle lift disclosed in Curran or
    Heidle); J.A. 183 (coupling Conrad’s tire hanger to the
    Curran lift).1 Furthermore, Shinn Fu provided the specific
    motivation to combine by adding these features together.
    See J.A. 182 (explaining why one of ordinary skill in the
    art would have coupled the Conrad tire hanger to a lift);
    see also J.A. 181 (discussing OSHA and why one of ordinary
    skill would be motivated to prevent bending over
    while holding a tire); J.A. 184 (same).
    In contrast, the Board addressed the prior art references
    by removing elements from individual references to
    achieve the resulting combination and found no motivation
    to combine the references in this manner.2 See, e.g.,
    J.A. 24–25 (“Thus, absent evidence to the contrary, we are

    not persuaded that a skilled artisan would have contemplated
    gutting Komorita’s cradle structure in favor of a
    simpler hanger structure where doing so would have led to
    the loss of the very benefits on which Komorita is premised.”)
    (emphasis added); id. at 24 (“The ability of Komorita’s
    tire holder to retain multiple vehicle parts and to
    self-collapse flat with the floor would be lost if the cradlelike
    structure was replaced with a simple tire hanger.”)
    (emphasis added). This analysis differs substantively
    from the additive approach Shinn Fu provided in its
    opposition to Tire Hanger’s motion to amend. Yet the
    Board largely engaged in this subtractive analysis while
    ignoring Shinn Fu’s additive combination of the Curran,
    Conrad, Komorita/Heidle references.3 See J.A. 20 (declaring
    in its Final Written Decision that the focus of the
    parties’ arguments merely “boils down” to the Komorita,
    Heidle, and Conrad references). And it did so even after
    describing Shinn Fu’s proposed combination as “the
    centerpiece of [its] argument.” See J.A. 290 ll. 1–13 (oral
    argument transcript).

    The Board has an obligation to consider arguments
    presented to it:

    Because the Board did not provide any analysis with
    regard to the manner in which Shinn Fun proposed its
    key obviousness combination, we have no meaningful way
    to review the Board’s patentability determination in light
    of Shinn Fu’s arguments. See Pers. Web Techs., LLC v.
    Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (concluding
    that the Board provided an inadequate analysis to provide
    meaningful appellate review); In re Nuvasive, Inc., 842
    F.3d 1376, 1384–85 (Fed. Cir. 2016) (remanding for
    failure to articulate a motivation to combine).
    To be clear, the Board’s error here does not stem from
    its disregard for the teachings of any particular reference.
    As Tire Hanger correctly observes, the law does not
    require that the Board address every conceivable combination
    of prior art discussed throughout an IPR proceeding,
    no matter how duplicative the other references are.
    Appellee’s Br. 29–30. The Board does have an obligation,
    however, to address the arguments that the parties
    present to it
    —here, represented by the manner in which
    Shinn Fu argued the Curran-Conrad combination in
    opposition to Tire Hanger’s motion to amend. It simply
    did not meet its obligation here. Accordingly, we vacate
    the Board’s Final Written Decision and remand for it to
    address Shinn Fu’s arguments in the first instance.

    link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2250.Opinion.6-29-2017.1.PDF

    See also Cartelli, 2010 U.S. App. Vet. Claims LEXIS 239 : Consequently, the Board has not complied with its legal obligation to address all arguments raised by the claimant. Robinson, supra.

    Mitchell, 295 Fed. Appx. 799; 2008 U.S. App. LEXIS 21476 : So long as “[t]he record makes clear that the sentencing judge listened to each argument,” “considered the supporting evidence,” was “fully aware” of the defendant’s circumstances and “took them into account” in sentencing him, the sentencing court has done its duty. Rita v. United States, 551 U.S. 338, 127 S. Ct. 2456, 2469, 168 L. Ed. 2d 203 (2007).

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  • My Top 25 Songs of All Time

    I took Gene’s request to heart and really tried to capture my top 25 songs. To be honest, however, I had a very difficult time narrowing the list to “all time” top songs. There are no true 25 best songs as proven by the various music Halls of Fame. I even had a hard time listing my top bands/artists. I enjoy many different genres and the list changes as I discover, or re-discover, music. In a pinch, however, I tend to gravitate to classic rock stations playing songs from the 70’s and 80’s….

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