An issue that comes up quite often in trade mark law is this:
can the owner of a trade mark registration stop someone else from
using their own name to identify their product or business? The
Trade Marks Act says that a trade mark registration is not
infringed if a person or corporation (company or cc) makes genuine
use of their own name. The Act also says that, in the case of a
corporation, the defence only applies where the corporation was
registered before the trade mark was registered. Case law tell us
that, irrespective of whether you are an individual or a
corporation, you must use your full name, although in the case of a
corporation you can drop the (Pty) Ltd or cc.
The Trade Marks Act goes on to say that the use must be 'consistent with fair practice'. But what does that mean? Well, it's always been assumed that this probably means that it's OK to use your own name if you didn't know about the earlier trade mark and you haven't deliberately sought to cause confusion. But in a fairly recent UK case the court seemed to set the bar a bit higher. In this case a London restaurant called itself Cipriani and promptly got sued by the Cipriani Hotel of Venice. The restaurateurs, who had a company registered under the name Cipriani, raised the own name defence, but the court rejected it because the use didn't meet the fairness requirement. Why? Because the restaurateurs hadn't done any trade mark searches and they hadn't taken any legal advice before they started operating under the name Cipriani – they basically hadn't addressed their minds to the 'name' issue at all, assuming no doubt that all was fine because they had a company registered under the name.
In a more recent UK case involving the accounting firm BDO, the
court laid down a full ten factors that should be considered to
decide whether or not the use qualifies with the fairness
requirement. A number of these deal with knowledge of the earlier
trade mark, but it's interesting that the court has again
mentioned the need to take legal advice and do trade mark
UK cases are not binding on SA courts, but they are often followed. Which means that it's quite possible that a SA court will in future consider whether the person raising the own name defence did all the things that prudent businesspeople do. In other words, take legal advice and do trade mark searches.
The message is clear – you need to get advice and do searches before you make any use of a trade mark. Even if that trade mark happens be your personal name or the name of your company.
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.