Discovering the Value of Liberty in Intellectual Property Adjudication: A Methodological Critique of the Reasoning in Discovery Ltd v Liberty Group Ltd 2020 4 SA 160 (GJ)

This article discusses the recent decision in Discovery Ltd v Liberty Group Ltd 2020 4 SA 160 (GJ), which concerned a claim of trade mark infringement in terms of sections 34(1)(a) and 34(1(c) of the Trade Marks Act 194 of 1993 and unlawful competition on a developed reading of the common law. This article argues that the court arrived at the correct conclusion by the incorrect means and failed to adequately construe the array of constitutional interests and considerations that pertained to the matter on the facts. Further, the lack of clarity on the appropriate constitutional port of entry for the judicial enquiry unnecessarily leaves future courts guessing regarding the correct methodology to employ in cases where intellectual property rights are asserted in opposition to constitutional rights and interests. It is argued that the transformative impetus of section 39(2) of the Constitution of the Republic of South Africa, 1996, as well as numerous substantive constitutional provisions are undermined when courts neglect to anchor judicial reasoning in the constitutional context and merely apply a constitutional veneer to whatever outcome has already been reached. Accordingly, we argue that courts are under a general obligation to root all adjudication in constitutional norms and method, which, we submit, secures a thicker concept of the value of liberty than has been produced in this decision.

‘As Good as New’ – Sale of Repaired or Refurbished Goods: Commendable Practice or Trade Mark Infringement?

Prolonging the life cycle of products in order to reduce waste and preserve resources is a call of our time. Entrepreneurial activity on the market for used and repaired goods should therefore be encouraged. However, problems may arise where trade-marked products are offered for sale after repair or refurbishment by third parties. While commercialisation of goods once put on the market by the trade mark holder or with their consent is free in principle, this does not apply when the condition of the product was changed after the first sale. This may cause a dilemma for persons who want to be active on the secondary market for repaired or refurbished goods: if the trade mark remains on the product, this may result in infringement; on the other hand, under the jurisprudence of the CJEU removal of the trade mark may equally be prohibited. This article explores the issue with a view to CJEU as well as German case law on this and adjacent scenarios. It concludes that instead of a strictly binary choice – either the trade mark remains on the product or is removed – a middle solution should apply that allows using the trade mark in relation to repaired or refurbished goods in addition to providing further information.

US Supreme Court holds willfulness unnecessary for award of profits in trade mark infringement case

Romag Fasteners, Inc v Fossil, Inc, No 18–1233, --- S.Ct. ----, 2020 WL 1942012 (23 April 2020) On 23 April 2020, the US Supreme Court held that a trade mark infringement plaintiff is not required to prove that a defendant acted ‘willfully’ in order to recover profits as an equitable remedy under section 35(a) of the Federal Trademark Act of 1946 (the ‘Lanham Act’), 15 USC s 1117(a).

Intermediary Liability and Trade Mark Infringement: Proliferation of Filter Obligations in Civil Law Jurisdictions?

This chapter discusses intermediary liability and trade mark infringement from a civil law perspective, while highlighting differences and commonalities of trade mark and copyright enforcement online. The chapter considers first how the infringement test in EU trade mark law is more context-specific than the infringement analysis in copyright law and how limitations of trade mark rights provide room for unauthorized use that serves (commercial) freedom of expression and freedom of competition. In this context, this chapter looks into the use of filtering mechanisms and how they might wash away these important nuances of the scope of trade mark protection. Again, the chapter makes a distinction between legitimate comparative advertising and infringing consumer confusion, legitimate brand criticism and infringing defamation, legitimate offers of second-hand goods and infringing sales of replicas in order to consider the threshold when trade mark owners obtain overbroad protection. Further, this chapter reviews leading case law of the Court of Justice of the European Union on the question of intermediary liability and filter obligations that points towards a cautious approach in trade mark cases—an approach that does not undermine the inherent limits and statutory limitations of trade mark rights. However, examples of court decisions in civil law jurisdictions, such as Germany, show a tendency of developing national doctrines that allow the imposition of more extensive filtering duties. Against this background, the chapter concludes by considering whether a balanced approach based on the principle of proportionality should prevail in trade mark cases.

Intermediary Liability and Online Trade Mark Infringement: Emerging International Common Approaches

This chapter discusses intermediary liability for trade mark infringement from an international perspective. Given that the lack of uniform international guidelines has made tackling counterfeits in a borderless digital environment even more challenging, this chapter shows that there are emerging intermediary liability common approaches at the international level for online trade mark infringement. The chapter outlines three common tenets that can be distilled into a transnational principle of intermediary liability, including knowledge-and-takedown obligations and availability of blocking injunctions. Further, this chapter discusses how this emerging common international principle is then coupled by a ius gentium of voluntary measures that results from voluntary cooperation between online intermediaries and rightholders to curb infringement. However, it is important to strike a fair balance with other fundamental rights, such as freedom of expression, information and lawful competition.