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DISCLOSURE OF PROPRIETARY & CONFIDENTIAL FORMULATIONS BY FORMER DIRECTORS A (VERY) BRIEF HISTORY Pika Chemical & Technical (Pty) Ltd T/A Afritech (“Afritech”) produces a fruit drying oil (FDO) used to aid the drying of raisins and sultanas. It contends that the formulation is proprietary to it and is confidential. It is very successful and supplies some of the largest food manufacturers in South Africa, including Pioneer Foods.   THE PLOT THICKENS The formulation was developed by the First Respondent (“Nolte”), while he was a director (and co-founder) of Afritech. He achieved this by reverse-engineering a formulation of an Australian company. After leaving Afritech, Nolte assisted another company in developing its own FDO. And you can imagine what happened next. FINDINGS The court found that “Indeed, and perhaps tellingly, Mr Nolte admitted that he is one of only a handful of people who know the formulation of Pylene FDO. This admission in my view, is sufficient to establish, prima facie, that the applicant's formulation of Pylene FDO is confidential to (Afritech).” Nolte developed the formulation whilst a director of Afritech and as such the technology was owned by Afritech (despite Nolte believing he was the owner as a result of his discovery). “I am accordingly satisfied that the applicant has established, prima facie, that Mr Nolte disclosed the applicant's formulation of Pylene FDO … and that such conduct is a breach of his ongoing fiduciary duty not to disclose information confidential to (Afritech)...”   ORDER   Interim interdict granted against all of the respondents from making use of Afritech's fruit drying formulations or any products therefrom without Afritech's consent (including by disseminating or taking possession thereof).    Key Lessons: 1.     A director’s fiduciary duty remains with a director after their resignation and is breached if it involves the use of confidential information that is worthy of protection. 2.     Make sure you protect your confidential information by way of physical and legal protections (NDA’s, employment contracts, etc) - confidential information such as the applicant's data sheets stored on Mr Nolte's erstwhile drop box folder on the applicant's computer. Speak to your specialist IP lawyers at Witz Inc Attorneys for advice and guidance on how to protect your valuable IP. Case reference: Pika Chemical & Technical (Pty) Ltd t/a Afritech v Nolte and Others (4093/2024) [2024] ZAWCHC 230 (30 August 2024) Thanks to Spartan Caselaw for the case update. #intellectualproperty #trademark #trademarks #iplaw #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #confidenitalinformation #tradesecrets #NDA #IPLitigation #directors #fiduciaryduty

I LOVE THE SMELL OF CRAYONS IN THE MORNING The United States Patent and Trademark Office (USPTO) has granted Crayola a registration for the scent of its crayons. The smell is described as follows: “... a scent reminiscent of a slightly earthy soap with pungent, leatherlike clay undertones.” Crayola have been trying to secure the registration of this mark for the last 6 years. The USPTO refused the application on 4 separate occasions on the basis that it was purely functional. Their reasoning was that the scent came from the ingredients used to make the crayons. Crayola overcame the refusal with the help of a specialist lab and argued that the scent was unique despite having the same ingredients as other crayons due to a unique step in their manufacturing process. As such the scent was not functional. Scent trademarks are registrable in South Africa although I am not aware of any that have been registered. Globally they are very rare, with only a few marks being registered for the likes of grape scented engine lubricant (my personal favourite), bubble gum scented sandals and piña colada scented ukuleles. Hopefully this opens your mind about what is protectable and how to protect it. For more information about how to protect your IP contact the specialist team at Witz Inc Attorneys who will gladly assist you. USPTO: https://lnkd.in/dsmdDerT Full Article: https://lnkd.in/dCSi294f #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement #crayons #crayola #scent #smell

NOT VERY DEMURE. NOT VERY MINDFUL. I must be getting old – I didn’t quite understand why everyone on (the) line was very “demure”, “mindful” and “cutesy”. That was until I read about the trademark issue… more evidence of my age…   TikTok creator Jool Lebron popularised the viral phrase "very demure, very mindful." She now has over two million followers on TikTok and has skyrocketed to internet fame. Lebron has seen a lot of success from the viral phrase, including appearing on Jimmy Kimmel Live!, and creating videos with Verizon and Southwest Airlines. However, she failed to apply for the registration of the trademark and someone else did. In a since-deleted post on X (can I still call it Twitter?) Lebron said “I’ve just invested so much money and time into this, and I feel like I did it wrong. … I just feel like I dropped the ball … and someone else has it now. I don’t even know what I could’ve done better because I didn’t have the resources.”. It’s the last sentence that really caught my attention. Protecting your IP is not very complicated and does not necessarily have to cost a lot of money. Sara Blakely (one my hero’s) filed her own patent for SPANX® because she could not afford the legal fees. The rest, as they say, is history. In terms of trademark law, two dates are extremely important – the date of first use and the date of application for the registration of the trademark. Lebron is not out of options at this stage and may still challenge the application for the registration of the trademark. In a subsequent post Lebron is quoted as saying “Mama’s got a team now!” The issue still remains that protecting IP is often an after-thought, which can have significant implications (both legal and financial) later on. This story should serve as a cautionary tale to entrepreneurs, influencers, and anyone who is looking to commercialise or control their IP. If you are spending money or making money you should protect it. Should you wish to protect your catchphrase… or any of your IP… contact the specialist team at Witz Inc Attorneys who will gladly assist you. Full article available here: https://lnkd.in/dj569yUQ #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement #tiktok #influencer

PITFALLS OF JOINT VENTURES Case citation: Mercury Fittings (Pty) Ltd v Doormax (Pty) Ltd [2024] ZAWCHC 183 FACTS In 2002 the parties entered into an oral JV agreement for the import and distribution of “QS” door handles and products. The material terms of the JV were: *Mercury and/or Doorware imported and distributed QS products; *They did so for their own account, but with a level of cooperation; *They agreed to split up the areas in which they would trade, the so-called “geographical split”, where Mercury had the exclusive rights to sell QS products in Capte Town and where Doorware had the exclusive rights to sell QS products in Gauteng; *They were the exclusive importers and distributors of the QS product within South Africa.           Mercury and Doorware carried on business in this manner, as wholesalers of QS Products, for over 22 years. Mercury traded as the Cape Town branch and Doorware traded as the Johannesburg branch for QS Products. No trademark applications were ever filed for the QS brand. In 2021 the owner of Mercury passed away and one of their key employees resigned and took up employment with Doorware in Johannesburg.  In early 2023, Doorware contravened the geographic split and began trading from Cape Town.  Mercury instituted interdictory proceedings in the High Court and was granted interdictory relief in terms of which Doorware was interdicted from contravening the geographic split. On 1 May 2023, Doorware sold its Cape Town business to Doormax, who continued to distribute QS Products in Cape Town. LEGAL PRINCIPLES The central issue was whether Doormax may deal in QS Products without the consent of Mercury. It was thus important to determine if any common law trademark rights existed and who owned them. The court found that the JV (both Mercury and Doorware) has been trading under the QS brand to the exclusion of the world for 20 years, thereby benefiting from the value that is inherent in QS and that the QS mark forms part of Mercury’s and Doorware’s goodwill. Mercury was thus entitled to protect it. ORDER The court granted the interdict against Doormax from distributing any product in the QS product range or any product bearing the name and/or branding of the QS product range, without the written consent of Mercury. KEY LESSONS: *JV’s are fraught with legal complexity and they should be reduced to writing. *Mercury had to first prove its reputation in the QS mark in order to protect it. This would not have been necessary if they had a registered trademark. Speak the specialist trademark lawyers at Witz Inc Attorneys for advice and guidance on JV agreements. #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement

ARE YOU NUT(S) ABOUT PEANUT BUTTER? Case citation: Solo Foods Sales and Distributions v Kalinda Trading [2024] ZAGPJHC 752 TIMELINE 2003 – Solo’s first use of its VITA NUT trade mark in relation to peanut butter. October 2017 – Kalinda commences use of the VITA NUTS trade mark in relation to peanut butter. 16 May 2018 - Solo applies for the registration of the VITA NUT mark in relation to peanut butter (this date becomes the relevant date from which Solo may claim rights once the mark is registered). 16 May 2019 – Kalinda applies for the registration of the mark KALINDA VITA NUTS. Solo subsequently brought a trademark infringement claim against Kalinda.   DEFENCE & COUNTER APPLICATION Kalinda acknowledged that the marks were confusingly similar. Therefore the only options were to attack the Solo mark and claim that it had prior rights. Kalinda’s argument was as follows: “In essence, Kalinda alleges that it used the (unregistered) VITA NUTS mark before Solo did, that such use was bona fide and continuous, and that it is accordingly entitled… to resist Solo’s attempt in these proceedings to restrain such use.” In support of their argument they provided the following evidence of use: *Sales of R 47k in VITA NUTS sales from 2017 to 2019 *A Facebook page entitled “Vita-Nuts” was created on 4 September 2017 *5000 pamphlets were handed out *Several vehicles were branded with the VITA NUTS mark *5000 VITA NUTS peanut butter sachets were included in the “goodie bags” for entrants to a triathlon event   The court found the marketing activities and the period during which Kalinda’s VITA NUTS products were visible and available to consumers (eight months) insufficient. In addition, Solo had first use of the VITA NUT mark (by some margin).   FINDINGS Kalinda’s defence and counter application both failed. Kalinda was interdicted and restrained from using the mark VITA NUT. KEY LESSONS *Register your trade mark as soon as possible. Solo had to wait until their mark was registered to bring infringement proceedings. *Keep detailed records of your use of your trade mark (including the date of the first use). *Run a clearance search before selecting a brand - be very careful not to select a brand that is confusingly similar to existing registered trademarks. Speak our specialist trademark lawyers at Witz Inc Attorneys for advice and guidance on brand selection. #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement 

U.S. RECORD LABELS ARE SUING AI MUSIC GENERATORS Universal Music Group, Sony Music Entertainment and Warner Music Group (among others) are teaming up against two prominent AI music-making companies (Suno and Udio-maker Uncharted Labs). Both Suno and Uido provide AI programs that enable users to generate songs from text prompts. This has raised ethical and legal questions about providing tolls to create full songs using AI versions of real artists’ voices. The record labels have joined forces in their lawsuit against Suno and Uido claiming that they have used “decades worth of the world’s most popular sound recordings” (many of which are still copyright protected) in order to train their models. Neither Suno nor Udio has publicly disclosed its training data, but they have stated that they have “implemented and continue to refine state-of-the-art filters to ensure our model does not reproduce copyrighted works or artists’ voices.” As the world tries to come to grips with the legality and morality of generative AI, the outcome of cases such as this (there are a number of other pending cases) could determine the future of how generative AI is used going forward and could have ramifications far beyond the music world. If you are a digital creator using AI generative tools or are concerned about your copyright work being infringed in AI-generated speak to the specialist IP attorneys Witz Inc Attorneys. Full article: https://lnkd.in/dxBk-Emh #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #copyrightinfringement #trademarkinfringement #brandenforcement #trademarkenforcement #AI #music #AImusic

COUNTERFEIT LEGO The High Court in Pretoria has just handed down a scathing judgement… against LEGO. BACKGROUND LEGO suspected that a retailer in Benoni was selling counterfeit LEGO products in its store. Their South African attorneys obtained a search and seizure warrant and the goods (over 9,500 items) were seized. And that (as the court said) is where “the sad saga commences”. It is worth mentioning that the remedies contained in the Act are far-reaching and highly invasive. They impact negatively upon constitutionally enshrined rights to privacy, property ownership and fair trial of a suspected trader.   ISSUES The court found a number of issues with the affidavit lodged by LEGO’s attorneys, including: 1. Goods were seized outside of the ambit of the warrant - “It is bizarre that the [police] sought a search and seizure warrant for copyrights and trade marks in Annexures “A” and “B,” which were never mentioned in the complaint affidavit.”; 2. An allegation was made of “Registered Copyrights” (there is no registration possible for the copyright in question in South Africa); 3. The register page (an extract from the Trade Marks Register) of the LEGO trade mark showed that the mark appeared to have expired on 17-02-2021. 4. The attorney's affidavit was "misleading" with respect to the actual infringement. Note: On point 3 above, it is noted that the register pages from time to time may contain inaccuracies. I have downloaded an extract, which shows that the mark was in fact renewed. In addition, the renewal confirmation (also attached) shows that the application to renew the mark was filed on 14 December 2020. Thus, the issue with respect point 3 above could have been easily resolved by attaching the renewal confirmation (Form TM5). FINDINGS The court held that “Inevitably, one asks oneself a rhetorical question whether the [magistrate who issued the warrant] took the trouble to read [the] complaint affidavit or simply followed what the [warrant officer] told her.” “Even on the lowest of thresholds, let alone on prima facie basis, the facts do not pass muster to justify the authorization of a search and seizure warrant.” The warrant was thus set aside and LEGO was ordered to return the seized goods to the applicant. Key Lessons: This case highlights the importance of precision in drafting any legal document. Speak to our specialist lawyers at Witz Inc Attorneys for advice and guidance on the protection of your IP. #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement #lego Case citation: My-China Discount Store (Pty) Ltd v Mosese [2024] ZAGPPHC 756

THOU SHALL NOT STAL STEAL… TRADE SECRETS OR COPYRIGHT (As was pointed out by the plaintiff in its heads of argument)   BACKGROUND Technical Systems (Pty) Ltd (“TS”) is TS is one of 6 manufacturers that supply the entire world market for feed chain for poultry and livestock. It is by far the largest of these manufacturers per volume and supplies more than 40-50% of the world market. Christiaan Kurz (“CK”) was employed by TS as a plant engineer from 2001 to 2009 and subsequently commenced his own operations to compete directly with his previous employer (TS). EVIDENCE Some of the key aspects were: CK had transferred approximately 34,000 electronic files from his ex-work computer to his personal laptops and to other hard drives. These files largely contained drawings which belonged to TS, of its confidential production processes and machinery, which CK had no right to have in his possession after leaving TS’s employ. CK used these materials to build materially similar machines and sought to compete directly with TS (including approaching customers directly and offering to sell the technical drawings). There was also evidence that CK had had unlawful access to TS’s emails and deleted hundreds of other such files, after he became aware of an Anton Pillar against him. FINDINGS Unlawful Competition: The court found that in setting up a competing plant utilising TS’s confidential information and trade secrets to replicate the TS’s confidential processes the defendants acted unlawfully.   Copyright: The court found that certain critical elements of products (which had been developed over a 20 year period and required a high degree of skill, labour and money) qualified for copyright protection. The defendants they copied the essential features of the plaintiff’s parts and components, added certain non-material aspects to them and removed or altered others, to produce theirs. As such they had infringed TS’s copyright.   Key Lessons: - The manner in which the misappropriation of trade sects and copyright takes place is fairly similar in most cases (transfer of electronic files from a work computer to a personal computer or to other hard drives). Both physical and legal protections should be put into place to try and prevent this from happening as far as possible. - Ensuring that you own the copyright in your key products / materials / equipment cannot be overstated. - Keeping trade secrets confidential is difficult but important.   Contact our IP specialist team Witz Inc Attorneys for professional advice. Case citation: Technical systems v Feed Chain Industries and Others (7235/2017) [2024] ZAWCHC 204 #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #copyrightinfringement #tradesecrets #trademarkinfringement #brandenforcement #trademarkenforcement

HORSE SOCKS (POLO v MARK ANTHONY) A (VERY) BRIEF HISTORY OF POLO The POLO brand in South Africa has no relationship with Ralph Lauren or US Polo Association. It was started in 1976 by a L’Uomo (Pty) Ltd who was acquired by LA Group (Pty) Ltd in 1988 for R 29 million. The POLO and POLO PONY marks owned by LA Group are shown as image 1. THE PLOT THICKENS According to the papers, Glenmar “is the largest sock producer in Southern Africa”. It manufactures socks for well-known brands such as JOCKEY and previously manufactured POLO socks for LA Group as well. Shortly after it lost the POLO manufacturing license, Glenmar decided to sell socks under the brand MARK ANTHONY with a “RACER AND HORSE device” (see image 2). The product label that they used is included as image 3. The court found that LA Group had established that their POLO marks are well-known in South Africa. It would appears that the financial information provided was particularly persuasive. For example, LA Group gave (inter alia) the following evidence: ·      LA Group’s sales were over R 1,2 billion in the previous 3 years ·      Sales in relation to socks were R 20,9 million for the period 2013 to 2022 and in the 2021 / 2022 financial year were R 2,8 million. The year before that they sold 178,336 pairs of socks. ·      It had spent R 98,9 million on advertising between 2006 and 2022 ·      Use of the POLO marks had been made for over 40 years ·      It showed a large volume of internet traffic to its website as well as substantial following on social media platforms. This provides some useful insight into the factors (and extent) required to show that a trademark is well-known in South Africa. ORDER   In addition to interdicting Glemar from infringing the POLO PONY device marks, Glenmar was ordered to deliver up for destruction all socks, packaging and labelling bearing the RACER and HORSE device. The economic and reputational harm of the above order cannot be overstated.  Key Lessons: 1.     Keep detailed records of all evidence of use. 2.     Competitors often seek to get as close as possible to the market-leader. Having a trademark registration for your brand provides an important moat for your business. 3.     If you are selecting a new brand, conduct full registrability searches with qualified IP attorneys who can advise you competently of the potential risk. Speak your specialist trademark lawyers at Witz Inc Attorneys for advice and guidance on how to avoid putting socks on your horse. Thanks to Spartan Caselaw for the case update. Case reference: LA Group v Glencarol [2024] 050755-22 (GP) #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement IP Team: Craig Shapiro Marius Gerber, Juanita Stolk, Nali Shayi

Why register your trademark? If nothing else - it protects your right to use the mark. Registering your trademark is one of the most important steps to take in building your business (and is often the most overlooked and misunderstood). Contact your IP specialist lawyers at Witz Inc Attorneys for advice and guidance on how best to protect your trademark now. #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorney #iplawyers #iplawyer #entrepreneur #branding #brand #branddevelopment #copyright