trade marks - enforcement

There are a number of bases for the protection of trade mark rights in South Africa, and they are discussed below:

unlawful competition

The ground relied upon in the above context is usually passing-off, which is a common-law remedy. Here the courts require proof of the existence of a reputation, and the likelihood of confusion. The question that always arises is what the difference is between passing-off and trade mark infringement (the latter is discussed below). Many entrepreneurs will have become used to being advised in intellectual property matters that a remedy in terms of passing-off or of infringement in terms of the Trade Marks Act 194 of 1993 (the Act), will be available in one scenario but not in the other. The remedy of passing-off has been found in one form or another for centuries. It is part of the common law, as mentioned above. In contrast, the system of statutory protection of trade marks by way of the registration thereof has, relatively speaking, not been in existence that long. The law relating to passing-off was made by judges, and the law relating to trade mark infringement was created by the relevant legislative bodies.

Rights relating to passing-off are established “gradually”, with use, and the central question would be when a reputation has been acquired insofar as a specific mark is concerned. The establishment of a reputation is dependent on a number of factors, including the nature of a mark, that is, the degree of distinctiveness, sales figures, promotional expenditure on the marketing of products bearing the mark or get-up, and the period of use. Protection in terms of the Act is available immediately, on registration, and is not, in the short term, dependent on use of the mark.

A further difference is that in cases of alleged passing-off, it is said that it is the goodwill built up through the use of a mark that is protected, whilst in instances of trade mark infringement, it is the right to the mark itself that is being protected.

Flowing from this fact is a practical difference between the two remedies, namely that passing-off involves a comparison of the two marks and the get-up of the products in relation to which they are used. In other words, the mere fact that a mark, whether registered or not, is used by A, does not automatically imply that A would be liable towards B for passing-off.

Colours and shapes or the addition of other distinctive material can thus be considered by the court to determine whether or not there is a likelihood of confusion. On the other hand, in the instance of trade mark infringement, the comparison is solely between the two marks themselves, and extraneous matter cannot be taken into consideration. In a manner of speaking, a holistic approach is adopted in passing-off cases. Trade mark infringement is concerned only with the mark that has been registered, and if that mark is used by the respondent, along with other distinctive material, the addition of the latter is disregarded.

In line with the above, in infringement cases there is a prohibition on the use of the mark in issue, but the wording of an interdict in passing-off cases rather relates to steps to be taken to distinguish the products concerned.

Passing-off does not require the establishment of the use of a mark in relation to the same or similar goods. This is a requirement in terms of sections 34(1)(a) and (b) of the Act, but not section 34(1)(c), which relates to the use of a famous mark in relation to any goods (these sections are discussed in detail below). Passing-off does require the establishment of a likelihood of confusion. In contrast, in instances where a registered mark is used in relation to the same goods, for which registration has been obtained, it is only the similarity between the marks that must be proven (section 34(1)(a)). It is not necessary to establish that confusion will result, as there is, in a certain sense, an irrebuttable presumption to this effect. Similarly, in the case of the infringement of a famous mark, in instances of dilution, it is not required to prove the likelihood of confusion. A central issue in passing-off cases is whether the use concerned is likely to adversely affect the goodwill of the business. The right to goodwill does not feature in infringement cases.

Lastly, it is important to bear in mind that the remedy of passing-off relates to a particular geographical area in which a reputation can be said to exist. In other words, where a mark is used in Brackenfell, it will not necessarily be possible to prevent the use of the mark in Brakpan. In the case of a registered mark, the registration will, in principle, be enforceable throughout the whole country.

types of infringment proceedings

Subject to marks that are well known in terms of the Paris Convention (discussed below), trade mark infringement proceedings can only be instituted on the basis of a registered mark. Four types of infringement proceedings can be identified.

Firstly, section 34(1)(a) determines that the following shall amount to infringement, namely, where there is unauthorised use of a mark, in the course of trade, in relation to the goods (or services) in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion. The requirement of “use in the course of trade” simply means that there must be trade in relation to the goods concerned. In other words, where a newspaper would use a trade mark as a heading for an article, such as “Harley-Davidson’s new model”, there would not be infringement as the mark is not used in the course of trade in motorcycles. It must be noted that this form of infringement relates to the same goods. In other words, the mark is registered by A, in relation to wine, and B uses it in relation to wine. In terms of current law, it is a requirement that a mark must be used as a trade mark, that is, to indicate origin. For instance, in a comparative advertisement, it will not be infringement as long as it is clear that consumers will not make a material link between the advertisement of X, and the products of Y, in the sense of thinking that the goods of X have Y as their origin. The marks must also be similar, either conceptually, phonetically, or visually, subject however to a global appreciation of the marks.

Secondly, section 34(1)(b) relates to use in relation to similar goods. In other words, A has a registration for clothing, and B uses the mark in relation to perfumes. These goods are considered to be similar. It is a requirement that the likelihood of confusion be proven.

Thirdly, section 35(3) of the Act provides the same scope of protection as section 34(1)(b), but without a registration. It is required however, that the mark must be well-known, as envisaged in the Paris Convention. Protection is possible, whether or not such a person carries on trading, or has any goodwill, in South Africa. In determining whether a trade mark is well-known, one may have regard to the knowledge of the trade mark in the relevant sector of the public, including knowledge which has been obtained as a result of the promotion of the trade mark.

Fourthly, section 34(1)(c) provides protection against the unauthorised use of a mark which is identical or similar to a famous registered trade mark, in relation to any goods or services, if the use of the trade mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, even if there is no likelihood of confusion or deception.

This type of infringement can take place even if the mark is used in relation to dissimilar goods or services. For example, MTV is a famous trade mark in relation to entertainment services, but it will also be protected against use on clothing.

There are a number of exceptions to trade mark infringement.
These include:

• the bona fide use of a person’s name;
• the bona fide description of the kind or geographical origin of the goods;
• the intended purpose of spare parts and accessories;
• the importation or sale of genuine goods;
• the bona fide use of any utilitarian features embodied in a container; or
• the use of another registered mark.

There are also a number of defences to a trade mark infringement action, including:

• the prior use of a trade mark; that is, use prior to the date of registration of the mark, or the date of first use by the proprietor, whichever is the earlier;
• the use of a well-known mark in certain defined circumstances, principally, before the mark became well-known in South Africa;
• the fact that the use of the particular mark is protected by the Constitution, in particular, the provisions relating to freedom of speech;
• the fact that there has been honest concurrent use of a trade mark (subject to the requirement that an application for registration has been filed, and the requirement that the use must have been on a substantial scale - the court has a discretion though).

opposition to trade mark application

A trade mark application can be opposed on various grounds, of which the following are the most pertinent, namely, that the application relates to:

• a mark which is not capable of distinguishing differences;
• a mark which is confusingly similar to a registered mark, applied for in relation to goods which are the same as or similar to the registered mark’s specifications, if there is a likelihood of confusion;
• a mark which is likely to lead to confusion with a mark that has been used, and in relation to which common-law rights have been established;
• a mark confusingly similar to a well-known mark, as contemplated in the Paris Convention, if the application relates to the same or similar goods in relation to which the mark is well known;
• an earlier application;
• the existing rights of another party; and
• a mark which is confusingly similar to a famous mark, if the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, even in the absence of confusion.

In appropriate circumstances, reliance can be placed on the honest concurrent use of a trade mark.

expungement

A registered mark can be expunged in circumstances that primarily correspond with the grounds of opposition set out above.

name objections

An objection can be lodged to the registration of a company or close corporation. Here the relevant legislation requires one to prove that the registered name is undesirable or calculated to cause damage. An objection, detailing, inter alia, with trade mark rights, is then lodged with the relevant Registrar. In general, regard is given to the similarity between the trade mark and the registered entity’s name, as well as the nature of the goods or services in relation to which the mark has been used, or registered, in comparison with the registered business purpose of the registered entity. Strict time periods must be observed, namely one year from the date of registration, if an objection is lodged with the relevant Registrar, or two years, if an objection is lodged in the High Court. These deadlines cannot be extended. There is provision for an appeal to the High Court from a ruling of the Registrar concerned. An objection against an unregistered business name can also be lodged.

counterfeit goods

Specific legislation allows for the prevention of the importation or sale of goods which are counterfeit. The goods can, for instance, be confiscated by the police. The basis for such an action is, inter alia, the infringement of a trade mark.

advertising standards authority

A complaint can be lodged with the Advertising Standards Authority. Various grounds can be relied on, amongst others, for when an advertisement takes undue advantage of the advertising goodwill relating to a trade mark.

domain name complaint

A complaint can be lodged with the appropriate body against a domain name registration that is abusive or offensive. Again, trade mark rights are very relevant. A domain name registration will be considered to be abusive, amongst others, if it appears that the registrant has registered the domain name primarily to sell it to the complainant, as further defined in the relevant provisions.

timeous enforcement

In conclusion, it must be emphasised that once a trade mark proprietor becomes aware of the unlawful use of his trade mark, he should take immediate steps, whether in terms of the common law, or the Trade Marks Act, to have such use interdicted.

An attorney should be instructed to send a letter of demand without delay. Firstly, the danger of waiting too long is, for instance, that in opposition proceedings, a long period of use side-by-side, in particular on an extensive basis, will be an important factor insofar as the issue of confusion is concerned. Secondly, a long or extensive period of use would militate against a finding of a likelihood of confusion in infringement cases, in instances where such confusion is in fact important. Thirdly, someone can also, in the case of passing-off or infringement proceedings, introduce evidence of use over a substantial period of time in order to be able to rely on the special defence of acquiescence in an infringement action. This could then secure the “right” to continue to use the mark.

disclaimer

The information provided is, by its nature, brief and incomplete and is not meant as a substitute for detailed legal advice. Bowman Gilfillan Inc. shall not be liable for any loss resulting from the use of the information provided herein. We urge you to consult us with your specific queries in regard to any intellectual property matter.