Importance of Trade Marks

The brand on particular goods or services is the first identifying feature that a consumer associates with a particular product.  The lack of protection for a brand can result in insurmountable difficulties if someone copies the identical name or uses a name that is confusingly similar, thereby creating confusion in the market place.  If there are no registered rights to rely on in terms of trade mark Legislation, then the owner of the brand stands to lose his most precious asset.  The association of a trade mark to particular goods or services can, in the mind of the purchasing public, carry with it an image of quality, prestige or other attribute that makes it more readily saleable.

SERVICES / TRADE MARKS

Trade marks are protected in terms of the 1993 Trade Marks Act.

Trade Mark law over the years has become complex and this document is not intended to be a full exposition of the law. It is intended to give basic information to anyone intending to seek protection for a trade mark, particularly someone proposing to seek protection for the first time.

Please contact us if any topic is of particular concern to you and is not dealt with in this synopsis or is not dealt with in sufficient detail to answer your question.

Trade Marks and "get-up" (Trade Dress)

A trade mark is defined as follows in the 1993 Trade Marks Act:
a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person.

A mark is defined as follows:
any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned.

Quite often the trade mark is associated with distinctive artwork which gives the packaging of the article a distinctive appearance. Such artwork is probably protected by copyright and the overall appearance of the article is often referred to as its trade dress.

What Trade Marks are registrable

In order to be registrable, a trade mark must be capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within those limitations.

A mark is considered to be capable of distinguishing as just defined if, at the date of application for registration, it is inherently capable of so distinguishing or it is capable of distinguishing by reason of prior use thereof.

A mark is unregistrable if it is likely to deceive or cause confusion with a mark that is already registered in another name. However, the present Act provides that, in such circumstances, the mark can be registered if the proprietor of the earlier mark consents.
How long is a Trade Mark remain in force

A trade mark remains on the register for a period of ten years from the filing date and can thereafter be renewed every ten years in perpetuity. However, it can be removed if it is not used for a continuous period of five years.

What Constitutes Infringement?

In simplistic terms a registered trade mark is infringed by the use of the identical trade mark by someone else in relation to the goods or services for which the trade mark is registered. However it will be appreciated that protection of this scope would be too narrow and would make trade mark protection virtually worthless.

Consequently infringement occurs firstly if a confusingly similar trade mark is used, and also occurs if it is used on similar goods or services. These latter provisions lead to most trade mark disputes which revolves around whether the marks in dispute are confusingly similar and likely to cause confusion or deception in the mind of the average consumer, when used on the respective goods or services.

Two other provisions in the Act which have made questions of trade mark infringement and registration difficult are those pertaining to well known marks. If a mark has a sufficient reputation, unauthorized use of the mark on goods or services that are unrelated to those for which the mark is registered are said to "dilute" the distinctive character or reputation of the mark and can be prevented.  By way of example,

• The brand name Dior is well-known for perfumes, fashion and accessories.  If the name Dior was used by someone other than the proprietor of Dior on entirely unrelated goods to those for which Dior is used, then this will amount to “dilution”, or the gradual whittling away of the reputation in the mark.
   
• The second provision in the Act relates to well-known trade marks.  A well-known trade mark cannot be validly registered other than by the original proprietor.  If a mark is considered “well-known” in South Africa then the proprietor of the mark will be entitled to protection in the well-known trade mark and can prevent the use by any other person who uses the mark in South Africa, even where the proprietor of the well-known trade mark has no registered rights in South Africa.

Both provisions are open to different interpretations and Court decisions are awaited on the meaning of these provisions.