First co.za ADR Appeal
The South African Institute of Intellectual Property Law (SAIIPL) has decided its first Appeal in the matter of Telkom SA Ltd & TDS Directory Operations (Pty) Ltd v The Internet Corporation (ZA2007-0005) involving the domain names phonebook.co.za and whitepages.co.za.
Telkom (Complainant) is the owner of “THE PHONE BOOK LOGO”, which is used, under licence, for various telephone directories throughout South Africa. Telkom also claims ownership of the common law trade mark “THE WHITE PAGES”. After an unsuccessful complaint Telkom filed an Appeal under the recently launched ADR Regulations.
The Appeal was dismissed, however the panel disagreed with the certain findings of the initial Adjudicator, the most notable being that of reverse domain name hijacking. The panel held that “Litigants and their legal advisers must be free to launch proceedings to protect rights - even if incorrectly perceived - without fear of castigation.”
It is interesting to note that the trade mark relied upon contained the following disclaimer:
"Registration of this trade mark shall give no right to the exclusive use of the word PHONE, or of the word FOONBOEK, or of the word BOOK, each separately and apart from the mark. The trade mark is shown in the English and Afrikaans versions, being two of the official languages, in which it is or will be used, the two versions represented having equivalent meanings. In practise, both versions of the trade mark will be used either separately or together, but when used together they will not necessarily be in close approximation one to the other."
Telkom argued that the initial Adjudicator erred in interpreting the disclaimer in that it merely limited its rights in respect of the word Phone on its own and the word Book on its own but not the combination of the two words. This absurd claim led to the panel citing numerous cases dealing with generic / descriptive marks, the most concise being Dunlop Rubber Co. Application (1942) 59 RPC 134 at 157: “Some words are so apt for normal description that no trade mark use and momentary distinctiveness can justify a permanent monopoly.”
Read the full decision at www.domaindisputes.co.za.