Often knock off products imported into the local South African market replicate well-known brands, and an analysis needs to be done to determine if the owner of the legitimate well-known brand can sue on the basis of South African counterfeit laws, trade mark infringement and/or a species of unlawful competition known as passing off and/or copyright infringement. To assist a proprietor of a well-known trade mark to sue on the basis of pure trade mark infringement in South Africa, it has to have secured a registered trade mark in such territory.
Typically, statutory trade mark protection is sought, in a given jurisdiction such as South Africa, that seeks to protect i) the primary word mark, and ii) label marks that contain the primary word mark. Protecting the word mark is often seen as the most important trade mark to protect, as it is after all the primary name of a given brand. Examples of well-known word trade marks are:
Label marks are also often protected by way of statutory trade mark filings and registrations where, in addition to word marks, there is a distinct look and feel of the get-up and product packaging. Some examples of label marks that could be filed and then registered for the well-known brands cited above are as follows:
The difficulty from an enforcement perspective comes when a third-party infringer manufactures a knock off product that has an entirely or markedly different word trade mark to that which is registered, or that which is incorporated in a label mark that is registered, but which adopts a confusingly similar get-up and product packaging style to that used by the proprietor of a well-known brand and trade mark.
Fictitious examples of knock off products are cited below, and illustrate the point.
|'KNOCK OFF' LABEL MARKS|
Whether one can rely on a registered word mark or a registered label mark that incorporates a well-known word mark for purposes of trade mark infringement or passing off against the copycat products cited above, is not 'cut and dry' as the word marks, which often constitutes primary features of the composite trade marks, are arguably different on some level.
A trade mark filing strategy that can assist, and avoid 'grey areas' from an enforceability perspective, is to file part marks.
Section 18(1) and (2) of the South African Trade Marks Act 193 of 1994 states as follows:
"Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and any such part as separate trade marks. Each such separate trade mark must satisfy all the requirements for registration of a trade mark under the Act and shall for all purposes be a registered trade mark."
Examples of part marks that can be filed, for the product examples canvassed above, are as follows:
As such, no matter what word trade mark is imposed thereon, proprietors of these well-known marks, or marks that may become well-known in time, are able to assert registered rights in such 'part marks' against such copycat products. Whether part marks can assist in anti-counterfeiting strategies has not been tested in South Africa, as totally different word marks imposed thereon, could dilute the possibility that the copycat product is a colourable imitation. However, filing part marks can certainly assist with trade mark infringement and enforcement in South Africa.
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.