Bernadette is a partner in the Technology, Media, Telecommunications and Intellectual Property Practice. She obtained her BA Law (1997) and LLB (1999) degrees from University of Johannesburg and completed her South African Institute of Intellectual Property Trade Mark, Copyright, Design, Patent and Comparative Trade Mark examinations in 2002, qualifying as a trade mark practitioner in 2004.
Key clients:
Clients from a diverse range of industries and professions (local and international), including mining, telecommunications, agricultural, pharmaceutical, banking, advertising, publishing, media, food and beverage, clothing, fashion design, manufacturers, retailers and some of the world's premier law firms. Clients include, First National Bank, Absa, OSI Pharmaceuticals, Computer Sciences Corporation, Foschini Retail Group, The Aldo Group, AB Inbev, Red Bull GmbH, British Airways, Comair, Kulula, Ericsson, Guinness UDV, United Way of America, the JSE Limited, Independent Newspapers, Emirates, Huge Group, PADI Incorporated.
Areas of expertise
Brand management (non-contentious, contentious and exploitation)
Intellectual property audits, due diligences and valuations
Local and international trade mark searches, filings, prosecution and recordals (assignments, registered users)
Advising on the protection and commercialisation of intellectual property assets(including trade marks, copyright, registered designs, patents and domain names)
Securitisation of intellectual property assets and recordal of security interests over intellectual property assets
Franchising
Trade mark and copyright litigation
Domain name litigation
Anti-counterfeiting litigation
Passing off
Unlawful competition
Ambush marketing
Advertising Standards Authority (ASA) complaints
Company and close corporation name objections
Top matters
Advises Specsavers BV and Specsavers Optical Group in relation to its branding strategy and enforcement of its SPECSAVERS trade marks in Mozambique, Ghana, Zanzibar, Zambia, Tanganyika, Nigeria, Angola and Tunisia since 2007. This has involved the filing of trade marks on its behalf and dealing with any objections and oppositions as a result. It has also resulted in the filing of various oppositions against third parties' trade mark applications, applications for the cancellation of third parties' trade mark registrations and various trade mark infringement proceedings being instituted against third parties. Bernadette has, more recently, successfully litigated for Specsavers BV and Specsavers Optical Group in relation to the infringement of its SPECSAVERS trade mark in Zambia and a trade mark opposition matter in Nigeria involving 8 trade mark applications which are all identical or similar to the SPECSAVERS trade marks. There have also been a number of litigious matters throughout Africa which have been successfully negotiated and settled.
Advises Red Bull GmbH in various litigious matters relating to its intellectual property in South Africa since 2009. Acted successfully for Red Bull GmbH in its opposition against Abuljadayel Beverages Incorporated's BISON trade mark in South Africa. This matter was significant for Red Bull as Abuljadayel Beverages Incorporated has filed applications in various jurisdictions and South Africa is the first jurisdiction where the opposition proceedings were successful, based on the conceptual similarity of the trade marks. Currently advising Red Bull GmbH in relation to the opposition of a further 10 trade mark applications, in respect of which we are currently finalising our applications to be served and filed.
Advising AB Inbev regarding the importation of beverages into South Africa during the 2010 Soccer World Cup, specifically in relation to importation requirements, product labelling requirements and obtaining the requisite approval for the products from the South African Bureau of Standards for the Qulimes, Guarana, Antarctica and Budweiser products.
Trademark protection, intellectual property and labelling advice for an internationally well known Hooters franchise.
Advised on all intellectual property aspects of British Sky Broadcasting Group plc's acquisition of TEAMtalk.com Limited's shares. This included dealing with the intellectual property due diligence and drafting the intellectual property related aspects of the transaction. The agreements also involved complex exchange control issues which Bernadette assisted with. Bernadette also assisted with the application for exchange control approval to the South African Reserve Bank.
Advised on all intellectual property aspects of Compass Group Southern Africa (Proprietary) Limited in respect of its acquisition of Supercare Services Group.
Advised on all intellectual property aspects of PPG Coatings South Africa (Proprietary) Limited's acquisition of the business of Ducol Coatings South Africa (Proprietary) Limited.
Advising a major client in relation to the intellectual property aspects of its acquisition of 70% of the issued share capital of Mayo Dairy (Pty) Limited.
Advising a major client in relation to the intellectual property aspects of its acquisition of the issued share capital of The House of Busby Limited followed by the sale of its business.
Acted for Nippon Telegraph and Telephone Corporation in its recommended cash offer for Dimension Data Holdings plc.
Advising Life Healthcare Group Holdings Limited with the intellectual property aspects of its ZAR7 billion initial public offer, the largest IPO ever on the JSE.
Advising a major client in relation to the intellectual property aspects of its acquisition of the issued share capital of Tiger Automotive Limited followed by the sale of its business.
Advising a major client in relation to the intellectual property aspects of its acquisition of the issued share capital of Tourvest.
Providing the intellectual property advice in the transaction where Webber Wentzel acted for a consortium consisting of Old Mutual, the Industrial Development Consortium of South Africa and Guma Investment in the scheme of arrangement between Tourism Investment Corporation Limited and its shareholders and the subsequent reorganisation and debt push down of the Tourvest Group. The transaction was valued at ZAR2 billion.
Providing the intellectual property advice to Tranter Energy & Mining Services (Proprietary) Limited in its purchase of Boart Longyear's percussive rock drills and hard rock tools product lines for sub-Saharan Africa and all its manufacturing operations in South Africa.
Advised the founder shareholders of South Africa's first mobile-only bank, Take Your Money Everywhere (TYME), in preparation for its launch in the country.
Accolades
Listed by Legal Experts EMEA 2012 - 2013 as an expert in her field.
Recognised in the 2010 and 2012 Managing Intellectual Property
