Defining what constitutes a trade mark can be difficult, especially when dealing with unusual trade marks such as single colours, sounds and scents, which explains the need for specialist trade mark attorneys.

It is sometimes easier defining something in the negative and, regrettably at our (the taxpayer's) expense I have become aware of an excellent example of what is not a trade mark, despite 20 applications having been filed in South Africa (and, I fear, in other countries).

It is true that trade mark law and commerce (money) are inextricably linked, but nowhere in the Trade Marks Act is money, a reasonable consideration or value referred to in defining what constitutes a trade mark.  The primary purpose of a trade mark is as a badge of origin.  A consumer spending his or her hard earn money to buy a cooldrink, shoes or a car will apply countless criteria in determining exactly which product to purchase but when the final selection is made and money passes hands, the function that trade marks such as COKE, PUMA or VOLKSWAGEN  play is to guarantee to the consumer that he or she is in fact buying genuine goods (of course if the goods aren't genuine then the trade mark proprietor would have a cause of action against the infringer based on provisions of the Counterfeit Goods and/or Trade Mark Acts).

While money and trade marks are inextricably linked in commerce, does that mean that money is a trade mark?  The Reserve Bank and their trade mark attorneys think so as they have filed a series of trade marks for the new rand notes in a range of classes covering goods and services such as jewellery and watches; stationery, typewriters and adhesives; financial; educational and scientific services.

The simple requirement in trade mark law is that you must use your trade mark in relation to your goods or services.  Is the Reserve Bank now going to be selling watches with the device of a the ten rand note appearing thereon, in the same manner that the ROLEX trade mark appears on Rolex watches?

Will they sell paper and stationery with the image of the rand notes thereon?  While the Reserve Bank undoubtedly provides financial and training services, such services are offered under the SARB trade mark and I cannot envisage the Reserve Bank using the image of the Randelas as a device trade mark in the same manner as, for example, Investec uses their ZEBRA device to advertise their financial services.  Interestingly, I note that the Reserve Bank is the registered proprietor of the KRUGERRAND trade mark covering precious metals.  Now that is a good trade mark because the goods in question are gold coins while KRUGERRAND is the trade mark which guarantees that the specific gold coin emanates from the Reserve Bank as opposed to other gold coins which may be in the market.

Section 3 of the SARB Act states that the primary objective of the bank is to protect the value of the currency of the Republic and the interest of balanced and sustainable economic growth in the Republic. In November 2012 newspapers reported that fake versions of the new bank notes featuring the face of Nelson Mandela are already in circulation, prompting the Reserve Bank to urge the public to be wary of inadvertently accepting counterfeit currency. It is true that counterfeit Randelas will certainly undermine the value of the currency but does that warrant filing invalid trade mark applications? 

However, there are many adequate remedies available to the Reserve Bank to prevent counterfeiting (in the currency sense) which have nothing to do with trade mark law and counterfeiting in the trade mark sense.

It is true that the Reserve Bank is not the only example of a trade mark proprietor claiming trade marks rights for goods or services in the respect of which it is not, or cannot possibly be using the mark in question in relation to such goods.  In such circumstances the justification is often the need for trade mark protection for defensive purposes. 

There is no need for the Reserve Bank to obtain, at considerable expense, whatever extra protection they believe they obtained by filing trade marks because they are more than adequately protected through the Prevention of Counterfeiting of Currency Act as well as the Reserve Bank Act which makes it an offence for any entity without authority of the bank, to engrave or make upon any material whatsoever in the words, figures, letters, marks, lines or devices the print whereof resembles in whole or in part such features should appear on any note of the bank or any coin which is legal tenders.  These criminal provisions are certainly much more effective than the "likely to cause confusion or deception" test in trade mark law.

In filing the trade marks the Reserve Bank stated on the official application form that it proposes to use or is using the new Rand notes in respect of the listed goods or services.  This act of folly is a cynical waste of taxpayer's money because currency is simply not a trade mark.The representations of the new rand notes are not applied to goods or services, they are merely used to purchase such goods or services. The question I pose to the Reserve Bank is what are your primary goods and services of interest?

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