Almost as precious as a diamond
While we generally enjoy discussing intellectual property ("IP") cases and issues in South Africa, we also like to consider IP cases in other countries, be they in Africa or beyond. In this article, we will be discussing an IP matter that played itself out in Botswana. For the benefit of readers who are not very familiar with Africa, here is some information that may be useful. Botswana is:
- a rather large country with a relatively small population
- a country that shares a border with, inter alia, South Africa
- a country that is famous for diamonds and
- a country that, as far as we are aware, does not often see a great deal of IP action.
So let us discuss...
The Specsavers case
Given that there is not often great deal of IP case law in Botswana, a recent passing off case is certainly worth a look: Specsavers (Pty) Ltd v Strategic Ideal Holdings (Pty) Ltd
When it comes to reporting on court judgments, it is generally a good idea to start with...
The facts
The Botswanan company, Specsavers (Pty) Ltd, which trades simply as Specsavers, brought a passing action against a fellow Botswanan company, Strategic Ideal Holdings (Pty) Ltd, which trades as Spec-Savers. The latter was the licensee of the South African Spec-Savers company.
Our understanding is that the two companies have competed for quite some time...in fact this competition may go all the way back to 1999. Specsavers sought relief, which was to include an injunction, legal costs and an order of punitive damages (the latter is something of a rarity!).
The law
The applicable legislation is Botswana's Industrial Property Act, No.8 of 2010 (the Act). The relevant provision is Section 7, which reads as follows:
'The exclusive right to a mark under this Act shall be acquired by registration in accordance with the provision under this Part.'
Section 81 of the Act is also key. It reads as follows:
'Registration of a mark shall confer on the registered owner, the right-
(a) to exclusive ownership of that mark;
(b) to prohibit third parties from using the mark; and
(c) to institute court proceedings against any person infringing his or her rights.'
The High Court judgment
On 27 March 2025, Judge Busang, sitting in the High Court of Botswana at Lobatse, dismissed the passing off action.
The High Court's findings
Here's a short summary of some of the court's findings:
- Precedents: The judge stayed close to home, referring to case law dealing with the delict (tort) of passing off in Botswana, Namibia and South Africa,
- Insufficient evidence: The judge made the point that passing off requires proof of reputation, misrepresentation and damages, making reference to the well-known South African case of Pioneer Foods (Pty) Ltd v Bothaville Milling (Pty) Ltd (2014), ALL SA 282 (SCCA). The judge ruled that Botswanan company Specsavers had failed to provide sufficient evidence.
- Positive right: The judge said that Spec-Savers' South African trade mark was lawfully registered, providing the company with a positive right to use and own the trade mark.
- A winner and a loser: The case was dismissed with costs, including costs of counsel- a notable win for Spec-Savers' South African licensee.
A few points regarding the judgment
It has been suggested that the case is notable for a number of reasons. For example:
- A rare bird: As we have already alluded to, in Botswana passing off judgments are rare – with the understanding that this was only the second reported passing-off judgment in Botswana.
- A positive right: It has been suggested that the judgment makes it clear that in Botswana a registered trade mark is what is sometimes referred to as a 'positive right' (meaning one that denotes ownership), rather than a 'negative right', which is basically one that entitles a trade mark owner to stamp out IP infringements.
- Reputation and misrepresentation: the judgment makes it clear that litigants in a passing off case must meet the evidentiary thresholds for establishing reputation and the misrepresentation.
Lessons
There's probably nothing ground-breaking in the judgment itself. But it is welcoming to see an IP case being reported in Botswana. The judgment does possibly suggest that courts dealing with IP-related cases in Botswana (or indeed other African countries) may be inclined to follow well-established South African case law.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
