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intellectual property (IP)

intellectual property (IP) | 06 Apr 2021
BY Gerard du Toit

The trade mark dispute that wouldn’t die a quiet death

This is a story about a large company getting a trade mark dispute wrong, with some valuable lessons to be learned along the way.

The background

In the South African province of KwaZulu-Natal, there is a small business that makes honey. it’s owned by Debbie Power and she has a team of five. The honey is sold under the trade mark Nature’s Gold. Debbie’s late husband, Andrew, devised the name Nature’s Gold and he sensibly registered it as a trade mark back in 2011. Andrew died unexpectedly in 2018 and Debbie has managed to keep the business going, although she admits that it has been a struggle.

In Southern Africa, there is a major chain of food stores called Food Lover’s Market ("FLM") – there are seemingly some 130 large stores and an even greater number of smaller convenience stores. In 2019, Debbie discovered that FLM had launched a honey called Nature’s Gold. Debbie did the right thing, she consulted an IP attorney. The attorney sent a cease-and-desist letter to FLM.

FLM’s response

FLM decided to deal with the matter in-house, which is unusual. But for the rest, the response was almost textbook deflect-and-delay and not necessarily legally correct.

FLM’s legal adviser said that the company had been unaware of the trade mark registration until it received the cease-and-desist letter in 2019. Moreover, their subsequent online enquiries had been unable to establish any use by Debbie’s business of the trade mark Nature’s Gold.

The legal adviser went on to suggest that there was an onus on Debbie to prove her firm’s use of the trade mark Nature’s Gold: “Without evidence of the extent to which your client has utilised its Nature’s Gold trade mark, as well as information with regards to the goods in respect of which your client has utilised its Nature’s Gold trade mark, we are unable to determine whether our sale of our Nature’s Gold honey is likely to give rise to deception and confusion in the market place.”

This is not correct in law. A trade mark registration confers exclusive rights, subject to any endorsements that there might be against the registration. The owner may choose to provide details of the use of the trade mark but it is not obliged to do so.

The legal adviser then said this about the supposed descriptiveness of the trade mark: “The words ‘Nature’s Gold’ are purely descriptive meaning that even with a trade mark registration you will not acquire the exclusive rights to the words ‘Natures’ [sic] or ‘Gold’ or those words used in combination unless your use of such trade mark is so extensive that it has gained distinctiveness and our use of the words or words similar thereto is likely to give rise to deception and confusion in the marketplace.”

Again, not correct. Although the words “nature’s” and “gold” individually have little or no distinctiveness, the term Nature’s Gold does have a certain level of distinctiveness.

Debbie Power’s reaction

Debbie responded to FLM’s legal advisor as follows: “We’ve been selling our honey in KZN for the past 12 years and Andrew took out the trademark in 2011... The name is particularly important to us and adds to the anger we feel with your total disregard for our small business.”

Frustrated with the delays and lack of response, she took her story to the media, in this case, the Daily Maverick.

In the article, Debbie suggested that the matter could be resolved in one of three ways: FLM’s cessation of use of the name Nature’s Gold, coupled with a public apology; the payment by FLM of royalties for every bottle of honey it sells under the name Nature’s Gold; or a purchase by FLM of the name Nature’s Gold.

An important development in the article was that the correspondence between Debbie’s IP counsel and the in-house advisor from FLM was included verbatim. The averments made in and tone of the FLM response were therefore displayed for the reader to draw his/her own conclusion.

The happy ending for Debbie

Things moved swiftly after the story broke on 1 March 2021. On 3 March 2021, business journalist and broadcaster Bruce Whitfield tweeted as follows: “Food Lovers Market admits on the Moneyshow it should have done better due diligence on Natures Gold trademark. Head of legal says they will negotiate with owner Debbie Power and, if that fails, they will change the name of their product. Result. Well done @dailymaverick”

Lessons to be learned

There may be cases where IP matters can be resolved via the court of public opinion, but these are few and far between. Caution needs to be exercised in taking matters to the media as one can easily lose control of the narrative with negative consequences for all parties involved - including the party that took the matter to the media in the first place.

If you have any IP issues get specialist advice. Bear in mind that the wheels can turn slowly – in this case, the cease-and-desist letter was sent in 2019. Bear in mind too that the matter and exchanged correspondence may well end up in the media. And consider very carefully how that might look for you.

Reviewed by Ilse du Plessis, an Executive in ENSafrica’s IP department.

Gerard du Toit

IP | Trade Mark Attorney | Senior Associate

gedutoit@ENSafrica.com

+27 82 885 3337