Witz Inc Attorneys

We at Witz Inc. are thrilled to announce the promotion of Juanita Stolk to Partner in our Intellectual Property department. Juanita joined the company six years ago and has grown from strength to strength in her specialized field of interest. Juanita was also recently admitted as a Fellow of the South African Institute of Intellectual Property Law. Juanita thus brings a wealth of experience to the Intellectual Property department, and embodies the client-centric approach that we at Witz Inc. pride ourselves on. We are proud and excited about her new role at our company. Please join us in welcoming Juanita as a Partner and congratulating her on her promotion.

GOOGLE’S GEMINI GETS TWIN SETBACK In March 2023 Google launched its answer to ChatGPT called “Bard”, which was subsequently rebranded to “Gemini”. Prior to announcing the rebrand (as one should do) Google filed US trademark applications for the registration of the GEMINI mark in connection with AI-related software products and services. Unfortunately for Google, the United States Patent and Trademark Office (USPTO) refused the registration of its marks based (in part) on an alleged likelihood of confusion with two prior registrations (GEMINI and GEMINI DATA) owned by Gemini Data, Inc. in relation to similar goods and services. To make matters worse for Google, Gemini Data filed a federal complaint against Google US in the District Court for the Northern District of California, alleging an infringement of its trademark rights. In addition Gemini Data alleges that Google must have conducted a trademark clearance search prior to the rebranding as they attempted to acquire Gemini Data’s rights through an anonymous buyer. Google has yet to file its response to the complaint. If Google is unsuccessful they will not be entitled to continue to make use of the GEMINI mark for their AI software.  KEY LESSONS: Conducting clearance searches for new brands is a critical part of the branding process and one that is often overlooked. Once a mark has been cleared, suitable trademark applications should be filed to secure the registration of the marks. If the mark is not available one should either select an alternate mark or devise a strategy with their IP counsel to try and mitigate the risk. As Google has shown, commencing use of a mark that you know is problematic could lead to unnecessary (and costly) litigation. If you require assistance with clearance searches for your trademarks speak our specialist IP lawyers at Witz Inc Attorneys. Full article: https://lnkd.in/dEn3FSSB #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement #trademarksearch IP Team: Craig Shapiro, Marius Gerber, Juanita Stolk, Nali Shayi

CASH CRUSADERS – A LESSON IN THE RISKS OF HOTEL CALIFORNIA CLAUSES A (VERY) BRIEF HISTORY CASH CRUSADERS FRANCHISING (PTY) LTD (“CCF”) operates a franchise business system in South Africa under the brand CASH CRUSADERS. The main business operations concern the buying and selling of new and second hand goods as well as pawn transactions. There are approx. 249 outlets, of which 150 were franchised stores and the rest corporate-owned. A group of CASH CRUSADERS franchisees (the “Franchisees”) became disgruntled and sent a notice to the franchisor, CCF, indicating that if their complaints were not remedied within 10 days they intended to cancel their franchise agreements. However, before the 10 day period expired, the Franchisees proceeded to cancel the franchise agreements anyway. INTERDICT CCF launched an application for an interdict to prevent the Franchisees from cancelling their agreements pending the final determination of the matter either by court or by way of arbitration and in the interim to comply with their franchise agreements. The interim order was granted. The Franchisees ignored the order and began operating under the name and style CASH XCHANGE. A tangle of litigation ensued (all the way to the Constitutional Court – which refused to hear the matter as it was outside of its jurisdiction). The Franchisees attempted to appeal the interdict (but were unsuccessful) and CCF sought to enforce the interdict (which ultimately backfired). ARBITRATION While all of this is going on, the parties commenced arbitration proceedings. ORDER   The court held that the interdict order must be complied with and the Franchisees must re-brand their stores back to CASH CRUSADERS pending the outcome of the arbitration. This is almost certainly not the last we have heard of this matter. KEY LESSONS: I personally do not like ‘Hotel California’ clauses (you can check in but you can never leave). If you seek to lock anyone into agreements, in my experience, it usually ends up in litigation with spurious claims of breaches and other tactics to try and 'escape'. I know this is a controversial position to take and I have come under much scrutiny for it.  However, I prefer to provide for an orderly exit that allows the parties to part ways in a commercially sensible manner. If you require assistance with franchising, licensing or otherwise commercialising your intellectual property speak your specialist commercial IP lawyers at Witz Inc Attorneys Case reference: Former Cash Crusaders Franchisees v Cash Crusaders Franchising (16453/2023) [2024] ZAWCHC 323 (16 October 2024) IP Team: Craig Shapiro, Marius Gerber, Juanita Stolk, Nali Shayi #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement #franchising #franchise

FAKE BUM BUM CREAM? I have a daughter – so naturally I am familiar with brands such as SOL DE JANEIRO and BRAZILIAN BUM BUM CREAM (side note: my 8 year old son thinks BUM BUM is the funniest brand EVER and now everything in my house preceded by the term BUM BUM). The company and its beauty products have become a viral internet sensation – so much so that in 2021 L’Occitane Group reportedly acquired an 83% stake in the company valuing it at $450 million (not bad for a company that started in 2015 and whose products smell like pistachios). Understandably, South African retailers wanted in on the action. Dischem and Takealot were early movers and its was with great excitement that the products were available on South African shelves. So great was the excitement that Dischem reportedly sold out of the products and had a waiting-list for their return. And that is where it all went wrong… Amid complaints from customers and accusations that they were fake (counterfeit) products both Dischem and Takealot have pulled the products from their shelves (does Takealot have shelves?). Thankfully for all those who are fans of the brand, the company has recently filed 15 applications for the registration of their SOL DE JANEIRO and BRAZILIAN BUM BUM trademarks (as well as for their other product names) in South Africa. However, the original two applications were only filed in early 2023 and the rest in July 2024 (presumably in response to the counterfeiting allegation). They would only be entitled to rely on these marks for infringement purposes once they have proceeded to registration and that this can take 2 to 3 years. At least the process has commenced and customers should feel safer in the knowledge that the company has committed to protecting its brands in South Africa. In the interim, both Dischem and Takealot appear to deserve credit for acting swiftly to remove the products until they can verify their authenticity. Key Lessons: Trademark rights are territorial and you will only have protection in those jurisdictions that you have registered your trademarks. My advice to clients is usually to ‘follow the money’ – wherever you make it (sales) or spend it (marketing) you should protect it. If you require specialist IP advice please contact the IP team at Witz Inc Attorneys.   Full article: https://lnkd.in/dgzDDPuw #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement #counterfeit #soldejaneiro #bumbum #brazilinbumbum

SNAPCHAT NOW OWNS “SPECTACLES” Snap Inc. the company that brought you Snapchat has obtained registration of the mark SPECTACLES for its smart glasses. Snap began selling its eye-wearable technology under the mark SPECTACLES in 2016. The most recent version of Snap’s product, Spectacles 4, was released in 2021 and is offered only to content creators by invitation. This version has an augmented reality display permitting users to see virtual effects. The goods listed under the application are very broad and include “wearable computer hardware” and “computer hardware and peripherals for remotely accessing, capturing, transmitting and displaying pictures, video, audio and data”. The USPTO (United States Patent and Trademark Office) initially refused the application in 2020 on the basis that it was either generic or descriptive. Snap approached the California Court to grant the trademark arguing that potential buyers consider "Spectacles" a Snap brand instead of a generic term for smart glasses. Snap was successful and the USPTO was ordered to place the trademark on the Supplemental Register. Snap will need to show that consumers associate "Spectacles" with the company in order for the trademark to be moved to the Principal Register. Key Lessons: If you are going to pick a generic / descriptive brand for your products or services, there is a much higher chance of difficulties arising during the registration process as well as keeping competitors at bay. If you require specialist IP advice please contact the IP team at Witz Inc Attorneys.   Case reference: Snap Inc v. Vidal, U.S. District Court for the Central District of California, No. 2:22-cv-00085 Full article: https://lnkd.in/gvv576km   Image source: https://lnkd.in/gWj9TvwF #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement

THE VALUE IP IN SOUTH AFRICA I read a brilliant article by Ciaran Ryan on Moneyweb this morning about South Africa’s failure to accumulate IP value over the last 20 years. According to the article, the value of intangible assets has remained at the same level since 2005 – “and that is a big red flag”! “This is no small matter. Research by McKinsey & Company shows that fast-growing companies invest 2.6 times more in intangibles than low-growth companies.” The causes attributed to the low value of IP in South Africa are: - A regulatory environment that discourages investment; - Procurement policies and regulations that inhibit tech startups; - Exchange control rules that make it difficult to raise foreign capital; - The Protection of Personal Information Act (Popia) imposes penalties on companies that misuse private information, but does little to encourage sharing of information; and - Rigid adherence to accounting rules, specifically IAS (International Accounting Standard) 38, which provides guidance on the measurement of intangible assets. I would like to offer one more reason -  a lack of education and information regarding IP creation, commercialisation and protection in South Africa; and What is interesting is that while bankers in South Africa tend to disregard intengibles when it comes to lending money, in the UK banks such as Natwest have recently launched an IP-based lenging facility to fuel high growth businesses (full article reference below). The creation, valuation and commercialisation of IP are absolutely essential parts of growing the South African economy and should be something we all take more seriously.   Thank you to Moneyweb for shining a light on this crticial issue. If you require specialist IP advice please contact the IP team at Witz Inc Attorneys.   Full Moneyweb article: https://lnkd.in/du_ANmR2 Natwest article: https://lnkd.in/dqCqKKv3   #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement #IPvalue

TRADEMARK SCAMS – PART 2 The fake law firm / fake trademark office scam This scam usually affects trademark owners who have filed US, EU and UK trademark applications. These are searchable databases that allow the scammer to obtain details such as the applicant’s name and address and details of the trademark applied for. The scam usually begins with an email to the trademark owner from an entity pretending to be affiliated with the Trademark Office (or even pretending to the actual Trademark Office). The scammers go to great lengths to create a façade of legitimacy and these emails are very convincing. The fraudster claims that you must take immediate action to either avoid losing your trademark rights or to prevent someone else from doing so. Most (if not all) of these emails demand urgent payment and have official looking invoices attached to them. A variation of this scam is where the fraudster poses as a law firm or trademark monitoring agency who falsely claim that you must provide them with payment for ‘additional tasks’ in securing registration as well as personal information and documentation. One of the most prevalent tools used is a sense of urgency – that if you don’t pay immediately you will lose your trademark. WHAT SHOULD YOU DO: 1.     Contact your trademark attorney – they will quickly identify the scam. 2.     Don’t respond. 3.     (and most importantly) Don’t pay! The USPTO, European Union Intellectual Property Office (EUIPO), and the World Intellectual Property Office (WIPO), have compiled useful databases of known scams as well as precautions to take. These are available here: - https://lnkd.in/dKhFCUjV - https://lnkd.in/dQ3wUDvF - https://lnkd.in/d84a-3_Q If you require specialist IP advice please contact the IP team at Witz Inc Attorneys.     #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement #scams

TRADEMARK SCAMS – PART 1 The cheap online trademark application The scam starts easily enough – would you like to protect your trademark for very little money? Well now you can using our online platform! You complete the online form, pay your fees and get registered trademark protection for your troubles… or do you. In many cases the answer is no. This is not necessarily because the platform is scam, but rather that the person or company running the platform does not have the necessary skills to competently protect your IP. Either way the result is the same – you pay for a service and you don’t get a registered trademark. Attached are examples of refusals (there are literally hundreds if not thousands of these) issued by the South African Trademarks Office against every single application filed by just one of these companies (of which there are many). I have redacted the information to save the unsuspecting client the embarrassment. The refusals include: - “INVALID APPLICATION“ - “invalid ab initio because they were lodged by a legal person that is not legally authorised to represent a client.” -  “This application was lodged and the application documents electronically signed by a person or entity not permitted in terms of the Trade Marks Act 194 of 1993 to represent trade mark applicants. The application is therefore deemed to be invalid as from the date of filing and the mark must be re-lodged/submitted by the applicant or its permitted address for service (being a practising attorney) within the Republic. Official fees are non-refundable.” In most cases, the client is blissfully unaware of the fact that their trademarks are invalid until they try and raise capital or enforce their rights. In my 15 years of practise I have seen many of these companies come and go, but I am often surprised about how many people fall into this trap. The protection of your IP is something you should take seriously if you want to build a big business. As the saying goes – you get what you pay for… and in this case they got nothing. Or in the immortal words of Chris Rock “you can drive a car with your feet if you want to, don’t make it a good idea”. KEY LESSONS: 1.     Don’t do your own legal work (or drive a car with your feet) – find a lawyer that that is skilled in the type of service you require and who seeks to add value to your business. 2.     If you do wish to file your own trademarks, do your homework (or get professional advice) – things like classification of goods & services can be tricky and if you get any aspect wrong your application may be invalid. If you require specialist IP advice please contact the IP team at Witz Inc Attorneys.     #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement #scams

NO MORE SUPER HEROES The term “SUPER HERO” has for many years (since 1977) been a trademark owned jointly by Marvel and DC (yes you read that right). That was until 26 September when the trademark was cancelled by a US Trademark Office tribunal. Many people are surprised to learn that the term “SUPER HERO” is a trademark and are even more surprised to hear that Marvel and DC collaborated to jointly own four US trademarks covering the term. The two trademark owners have opposed dozens of superhero-related trade mark applications and it has been argued that they have done so to stifle competition in respect of the super hero genre – in particular against small and independent comic creators. The challenge to the SUPER HERO trademark was brought by a London-based comic book artist Scott Richold, through his company Superbabies Ltd. Superbabies had applied for the registration of the mark SUPER BABIES in respect of a comic featuring infant superheroes, which was opposed by Marvel and DC.  What is unusual about this case is that Marvel and DC failed to respond to the court requests and it appears that Superbabies obtained default judgement against them. If you require specialist IP advice please contact the specialist team at Witz Inc Attorneys. Full article: https://lnkd.in/dtPrcUYH Case citation: Superbabies Ltd v. Marvel Characters Inc, Trademark Trial and Appeal Board, Cancellation No. 92085201. #intellectualproperty #trademark #trademarks #iplaw #brand #branding #lawyers #litigation #ip #trademarks #trademarklaw #trademarkattorney #trademarkattorneys #iplawyers #iplawyer #entrepreneur #brandprotection #copyright #trademarkinfringement #brandenforcement #trademarkenforcement #marvel #DC #superhero IP Team: Craig Shapiro, Marius Gerber, Juanita Stolk, Nali Shayi

What an incredibly special day it was!