South Africa: No Name Branding

Last Updated: 15 August 2013
Article by Rachel Sikwane

Most Read Contributor in South Africa, September 2018

Some time back we wrote about what we described as the 'no logo' trend. The article dealt with the fact that certain luxury goods manufacturers felt compelled to sell some of their products without any branding whatsoever, seemingly because Chinese consumers were eschewing luxury branded goods - which they saw as being brash - in favour of unbranded goods made by up-and-coming designers.  We predicted that this trend would not last.

According to a news article, at the 2013 international trade mark conference (INTA), there was an interesting discussion about something a little less extreme: how a number of major international companies seem to be ditching their brand names and simply using their logos to identify and distinguish their products. Starbucks and Twitter were mentioned as examples. You may have noticed how Starbucks has recently dropped the brand name from its logo, whereas in the case of Twitter the bird logo does appear to be playing an increasingly important role.

Why is this happening? It seems likely that, in the same way that fast food and other companies, whose products are enjoyed by children, know that infants recognise logos long before they recognise words, multinationals are realising that many consumers are far more likely to recognise logos than English words. So there's every chance that this trend will continue.

I'm certainly not qualified to comment on the practical problems that this may create, for example how to advertise a product on radio.  But there is one very obvious trade mark problem that arises:  will trade mark registrations for brand names that are being ditched become vulnerable to attack for non-use?

Use is integral to trade mark law and, in order to get a trade mark registration you must have a genuine intention to use the trade mark for the products for which you are seeking protection. Likewise, once you have a trade mark registration you must use the trade mark in order to keep the registration valid.  These requirements are important because they ensure that companies don't register (and hold on to) trade marks that they have no real interest in. A trade mark registration that is unused for a period of time can be removed from the register, and in most countries that period is five years.  In some countries you automatically need to prove use after a certain period of time, whereas in others, like South Africa, you're only obliged to prove use if a third party challenges your registration. This will generally happen when a third party feels threatened by your registration, typically because it wants to use that trade mark itself, or perhaps a similar trade mark.

The law says that the use must be genuine in order to keep the registration alive, but just what does that mean?  Non-use cases come up quite often so the courts have had a number of opportunities to consider the issue. The courts have made it clear that genuine use means ordinary commercial use in the context of the particular company and the particular product area. What it mustn't be is token use, in other words use that serves no real commercial purpose and is simply intended to keep the registration alive.

So must there be actual sales in order for use to be genuine? This question comes up from time to time and there's an old South African K Mart decision, which held that, in some cases, advertising without actual sales might be sufficient where, for example, a foreign company advertises goods in magazines that circulate in South Africa as part of a strategy to start selling its goods in South Africa. In a more recent case involving the trade mark GAP, the US company that owns the brand was able to persuade our appeal court that it had made genuine use of the trade mark in South Africa despite the fact that there had been no sales of GAP merchandise over the relevant five-year period. This was because the US company had held negotiations with Stuttafords over the relevant period, negotiations which were aimed at (and resulted in) Stuttafords being appointed a South African distributor of GAP merchandise in South Africa.

So, actual sales are not always required.  And in some cases actual sales may not be enough. In the Gap case a further issue arose – did the sale of 21 GAP personal care products by another South African company, Clicks, amount to genuine use?  The judge in the lower court had held that this use was so small that he could only conclude that it had been done with the ulterior purpose of keeping the registration alive, which meant that it was token use rather than genuine use. But the appeal court did not have to consider this issue because it had already found that the negotiations with Stuttafords were sufficient to keep the registration alive.

A further point on use - you must have clear evidence of use in order to keep your registration valid. In a recent case involving the company New Balance, the court held that New Balance's evidence of use of the trade mark P-F in South Africa was not good enough because it was vague as to the dates and there was no documentary proof of use, like invoices or delivery notes. So do keep good records!

So how is this likely to affect companies who drop their brand names in favour of their logos?   Well, I find it hard to imagine how a company can actually drop a brand name completely – surely the name must still appear on websites, or as part of email addresses and the like!   But whether this will be regarded as sufficient use is debatable. And surely the consumer will continue using the brand name  - no-one's going to say 'I'm going to have coffee at the green and white weird siren logo' , or 'I'm going to announce this news on the  little bird logo'. But consumer use will probably not be regarded as genuine use by the company. So we may be in for some interesting court cases if the no name trend does in fact continue!

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
ENSafrica
ENSafrica
ENSafrica
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
ENSafrica
ENSafrica
ENSafrica
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions