This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 7: Simplified or Fast Track Procedures for Certain Intellectual Property Claims
Supreme Court of Appeal of South Africa [2022]: Advertising Regulatory Board NPC and Others v Bliss Brands (Pty) Ltd (786/21) [2022] ZASCA 51
Date of judgment: April 12, 2022
Issuing authority: Supreme Court of Appeal of South Africa
Level of the issuing authority: Appellate instance
Type of procedure: Judicial (Administrative)
Subject matter: IP Regulatory Body; Enforcement of IP and Related Laws; Copyright and Related Rights (Neighboring Rights); Trademarks
Plaintiff: First Appellant: ADVERTISING REGULATORY BOARD NPC; Second Appellant: COLGATE-PALMOLIVE (PTY) LTD; Third Appellant: COLGATE-PALMOLIVE COMPANY
Defendant: Respondent: BLISS BRANDS (PTY) LTD
Keywords: Adjudicative administrative tribunal, Ousting the jurisdiction of the ordinary courts, Establishing a parallel dispute resolution process, Rules of evidence, Overlap with elements of a cause of action that could be pursued in a court, Public powers sourced by an agreement, Private body exercising a public function, Self-regulatory body, Right to self-regulation
Basic facts: The Final Appeal Committee (FAC) of the Advertising Regulatory Board (ARB) held against Bliss Brands, which was not one of the ARB’s members, in terms of clauses 8 and 9 of its consensual Code of Advertising Practice. The FAC held that Bliss Brands had breached the Code by exploiting the advertising goodwill and imitating the packaging architecture of Colgate’s Protex soap. It ordered Bliss Brands to cease the distribution of its Securex soap packaging.
The FAC judgment was taken on review to the High Court (a court of first instance). The High Court mero motu questioned the constitutionality of the ARB’s powers. The High Court held, inter alia, that the ARB had no jurisdiction over non-members, that it could not oust the court’s powers and that it could not hear legal issues that entail the same enquiries as those which courts are called upon to consider in cases dealing with passing off and contraventions of copyright and trademarks.
Held: The Supreme Court of Appeal of South Africa held that the ARB is a legitimate parallel adjudicative administrative tribunal, established by agreement/self-regulation. The fact that elements of a complaint before the ARB might overlap with elements of IP causes of action that could be pursued in a court of law, does not mean that the ARB ousts the court’s jurisdiction. The ARB may consider and issue a ruling to its members (which is not binding on non-members) on any advertisement, regardless of by whom it is published, to determine, on behalf of its members, whether its members should accept any advertisement before it is published or should withdraw any advertisement if it has been published. Bliss Brands was held to be bound by the ARB’s FAC judgment, due to the aforesaid principle and the fact that it had subjected itself to the ARB’s jurisdiction.
A narrow application for leave to appeal, on the Advertising Regulatory Board’s jurisdiction only, was dismissed (see Bliss Brands (Pty) Ltd v Advertising Regulatory Board NPC and Others (CCT 132/22) [2023] ZACC 19).
Relevant holdings in relation to simplified or fast track procedures for certain intellectual property claims: The Advertising Regulatory Board is a constitutionally unassailable parallel adjudicative tribunal which may deal with complaints based on elements which overlap with the elements of traditional causes of action pertaining to copyright, trademarks and passing off, heard by courts (it bears mention that advertisements axiomatically include packaging and the use of trademarks and copyright). It follows that the ARB’s simplified and accelerated procedure may be followed by parties who wish to resolve IP disputes (excluding most aspects of patent law) and make use of the remedies/sanctions imposed by the ARB.
Relevant legislation:
Independent Communications Authority of South Africa Act 2000 (Act No. 13 of 2000)
Electronic Communications and Transactions Act (No. 25 of 2002)
Not legislation but consensual codes:
The ARB’s CODE OF ADVERTISING PRACTICE, which is based upon the International Code of Advertising Practice, prepared by the International Chamber of Commerce. Available at: https://www.arb.org.za/phone/codes.html
The ARB’s Procedural Guide, with emphasis on section 14 (the sanctions which may be imposed). Available at: https://www.arb.org.za/assets/procedural-guide-v2021.1rev.pdf