Europe’s highest court recently gave a decision in a trade mark case that deals with the technical, yet highly important, issue of trade mark classifications and class headings.
According to Rowan Forster: director in ENS’ IP department, a trade mark is registered for particular goods or services for which the trade mark owner uses or intends to use the mark. “Goods and services are categorised in 45 different classes (34 goods classes, 11 service classes), in terms of something known as the Nice Classification,” explains Forster.
“Each class has a heading, and in some cases that heading gives a pretty good indication of exactly what goods or services are covered by the class, but in other cases it’s somewhat obscure. In addition, there’s an alphabetical list of goods and services that comprises some 12 000 entries, so if you want to find out what class a particular product falls into, you simply look it up in the alphabetical list and you have your answer.”
According to Forster, trade mark authorities generally don’t like trade mark applications that are framed as covering ‘all goods in the class’ because they feel that registrations like this are both unclear and overly broad. “Yet, for reasons that don’t quite make sense, they’re happy to accept applications for class headings, even though there’s a general acceptance that if a trade mark is registered for a class heading, it covers all the goods or services that fall into that class (certainly the EU trade mark system operates on this assumption).”
The case in question
The UK Chartered institute of Patent Attorneys filed a UK trade mark application to register the mark IP Translator. The application was filed in class 41 for the class heading, which reads: ‘Education; providing of training; entertainment; sporting and cultural activities’. The application was refused by the UK Trade Marks’ Office on the basis that the mark was non-distinctive, being descriptive of some of the services covered. Why? “Because the alphabetical list shows that translation services – services that are not in any way suggested by the class heading – fall into class 41,” says Forster. “So, went the argument, as the application is for the class heading, translation services are covered, which means that the mark is descriptive of certain of the services for which protection is required.”
The issue that found its way up toEurope’s highest court was therefore very simple: does a trade mark application that’s filed for the class heading in fact cover all the goods or services that fall into that class?
The European court tends to give judgments that are understated and that require some thought. What it said here was this: goods and services must be identified with sufficient clarity and precision to enable authorities and economic operators to determine from the classification exactly what protection is sought, which Forster agrees is fair enough. “It’s okay to use class headings, and in some cases this will be sufficiently clear and precise, but there will be cases where it’s not sufficiently clear, and it’s then up to the trade mark owner (and the trade marks’ office) to make sure that it’s clear just what is and isn’t covered.”
So what does this mean? “Well, if you do file for a class heading, you will probably need to add words like ‘ …this covering all the goods/services in the class’ at the end of it – the EU trade mark authorities have already indicated that this will be necessary.
“Alternatively, if you don’t want everything covered but you do want to use a class heading, you may need to add a specific exclusion at the end of it. Either way, greater thought will need to be given to trade mark classifications in future. Not only when filing applications in Europe, but also when filing in South Africa, because decisions of the European court, although not binding in South Africa, are often followed here.”
Top Sectors For SMEs In 2019
“As such, SMEs in the construction, communications and electrical fields are all likely to benefit from supply and sub-contracting agreements over the coming years.”
While the South African economy has been underperforming for a number of years, the first positive signs of turnaround started to become visible by the second quarter of 2018, and by the end of the third quarter, data supplied by Statistics South Africa showed that the economy had indeed grown by 2.2 percent, compared to the previous quarter. This uptick is expected to have a positive effect on business confidence in 2019.
This is according to Jeremy Lang, regional general manager at Business Partners Limited (BUSINESS/PARTNERS), who says that certain business sectors have already seen an increase in opportunities for small businesses and start-ups.
“While these sectors will not be without challenges, the following four industries are likely to offer the best opportunities for small and medium enterprise (SME) owners to grow their enterprises in the coming year.”
The World Travel and Tourism report 2018, revealed that the direct contribution of the travel and tourism sector to South Africa’s GDP has been projected to rise from R136bn in 2016 to R197.9bn by 2028 – set to make up a total of 3.3 percent of the country’s total GDP, says Lang.
“Although this sector experienced some setbacks in 2018, such as the drought in the Western Cape and stricter visa regulations for children entering the country, both the water restrictions and visa regulations have been relaxed and the sector is once again poised for growth,” he says.
Statistics South Africa has credited this industry with being the biggest driver of growth in the country’s GDP, having expanded by 7.5 percent in September 2018, says Lang. “To bolster this, Government has made a concerted effort to stimulate small business growth in this area with initiatives such as the Black Industrialist Programme and the SA Automotive Masterplan.”
He adds that businesses in the manufacturing sphere could therefore likely see significant opportunities in the form of outsourcing contracts and new partnerships with large corporates.
“The debate around land expropriation has occupied most of the discussions surrounding the agricultural sector in 2018, with some questioning growth prospects of this sector. However, this industry has a lot of growth ahead of it, as demonstrated by its 6.5 percent growth over the last three months of 2018,” explains Lang.
“Further to this, the industry is also already taking significant advantage of seven climatic regions in South Africa, with the export of a wide variety of high quality fruit and vegetables increasing substantially,” he points out. The recent outbreak of foot and mouth disease that has resulted in the suspension of the country’s FMD-free status will however significantly impact meat exporters.
In terms of opportunities for SMEs, he says that these may most likely be found in the rural and underdeveloped regions, where the need for resources like efficient transport, state-of-the-art cold storage, better irrigation and private power generation will be key to making agriculture projects more productive and competitive in the export market.
Data and information technology
Connectivity and information technology infrastructure are both crucial to business and employment growth in South Africa, says Lang.
“With many municipalities and the Western Cape government committing to providing all of its residents with free data as part of a plan to expand public Wi-Fi network access, it is clear that this is also becoming a high priority on a state level.”
It has also been reported that South Africa is awaiting the arrival of three international data centres, and large players in the communications sphere, including Vodacom, Telkom and Vumatel, are making huge strides in drastically growing the country’s fibre optic backbone, he adds. “As such, SMEs in the construction, communications and electrical fields are all likely to benefit from supply and sub-contracting agreements over the coming years.”
In conclusion, Lang says that as South Africa’s economic growth has started to turn around, business owners should keep their ears to the ground as 2019 is highly likely to be a year of opportunity.
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SME Insurance Checklist For New Year
Malesela Maupa, Head of Product and Insurer Relationships at FNB Insurance Brokers, advises SMEs to consider the following factors when reviewing their policies.
Business owners who are planning for the year ahead should not overlook the importance of reviewing their insurance policies to ensure they are adequately covered against insurable risks.
Malesela Maupa, Head of Product and Insurer Relationships at FNB Insurance Brokers says, every year businesses face unique challenges ranging from credit and market risks, technological disruptions, compliance, operational and regulatory risks, amongst others. As a matter of precaution, insurance policies should at least be reviewed or updated once a year.
He advises SMEs to consider the following factors when reviewing their policies:
- Employee movements – if there are any employees who have left or joined the company, ensure that your policy is updated accordingly.
This type of cover normally depends on the role and contribution of the employee to the business. For instance, directors may be covered for Key Person Insurance and Directors & Officers Liability insurance.
- Protest Actions – this year is the national election year and leading up to elections we can expect to see an increase in the frequency and severity of protest actions, riots and strikes. Thus, it is essential to ensure that adequate special risks cover is in place from the South African Special Risks Insurance Association (SASRIA).
SASRIA provides cover to both individuals and businesses against special risks like civil commotion, public disorder, strikes, riots and terrorism at affordable premiums.
- Cyber risks – it is essential to communicate with your insurer or broker and find out if there are any new risks that your business should be protected against. Cyber incidents continue to be a major risk for businesses especially in the SME sector. Over the last couple of years there has been a major increase in the number of reported cyber incidences.
More businesses are now facing increased cyber threats due to their increased dependency on technology, relating to their internal and customer data being compromised by fraudsters. It is therefore essential to have some form of cyber risk insurance cover and/or enhancement of data security protocols.
- Regulatory changes – every year there are a number of regulatory changes that impact businesses directly or indirectly, which may result in fines and penalties for non-compliance.
- Natural catastrophes – the increase in the frequency and severity of extreme weather conditions, coupled with intensifying natural catastrophes will continue to have a significant impact on businesses.
Businesses should ensure they are adequately protected against these risks to avoid incurring sever financial losses.
- Business changes – should a business consider moving to a new location, purchasing new premises or venture into new business activities, these types of changes could have a major impact on its risks profile. As a result, the policy needs to be updated accordingly.
- New and Enhanced products – An innovative culture has taken over the insurance industry and ever so often we see the introduction of new products or the enhancement of existing products. Get in touch with you broker to advise you on any new products that might add value to your existing insurance portfolio.
“Reviewing your policy regularly gives you peace of mind knowing that you can focus on running your business effectively, without worrying about unforeseen risks,” concludes Maupa.
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