Wednesday, January 16, 2008

The final FIFA prohibitions are attached hereto.
The marks prohibited are not the same as those ones proposed in the draft notice (excluded, in particular, are 2010, and WORLD CUP).  Also, the interpretation of the apparent absolute prohibition of the legislation is now to be done in a different way.

In submissions to the governemnt, it was suggested that the "absolute" prohibition that section 15(1) brings about, be tempered by making it subject to the provisions of section 15A.  This has been accepted by the government, as section 15(1) is to be read, specifically, with section 15A(2)-(3).  For ease of reference I quote the pertinent parts of the latter below:
       "(2)  For the period during which an event is protected, no person may use a trade mark in relation to such event in a manner which is calculated to achieve publicity for that trade mark and thereby to derive special promotional benefit from the event, without the prior authority of the organiser of such event.
        (3)  [T]he use of a trade mark includes...the use of the mark which, in any way, directly or indirectly, is intended to be brought into association with or to allude to an event."
It is thus no longer a prohibition to use the marks concerned as such, it must also fall under section 15A(2)-(3).
The final notice is to be interpreted to prohibit only the specific marks listed.  So the use of them is not unlawful in terms of section 15 of the Act, only if they fall within section 15A(2)-(3).  The latter is now the norm.  Consequently, depending on the circumstances, the use of the other not specifically listed marks could still amount to a contravention of section 15A(2) of the Act, or normal trade mark infringement, and possibly passing off.  However, there is no longer an ABSOLUTE, but a conditional prohibition of the specified terms.
The question would only be whether any conduct falls within section 15A(2)(-(3), and, as such, and in contrast with normal infringement, the classes involved as such would not matter. One should bear in mind also that the South African dilution provisions can also provide, in effect, protection in all classes.
Dr Wim Alberts

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