Introduction
Trade marks are meant to differentiate your goods or services
from the goods or services of a third party. Sometimes, third
parties may seek to take a short cut and turn a quick profit by
using your trade mark in order to ride on your coattails and take
advantage of the time and money you have spent in building a
reputation in your trade mark and making it a well-known
brand.
From that, you may wonder if South African law (the Trade Marks Act
194 of 1993) protects your registered rights where a third party
has applied to register a mark or uses a mark that is identical or
confusingly similar to your trade mark but for goods or services
that are different to the goods or services for which you use or
have registered your trade mark? Imagine you are the owner of trade
mark "A" which is well-known for cars, and a third party
has applied to register or uses the mark "A" for
household appliances. You would wonder if you had protection in
such an instance as the goods the mark is being used are clearly
different from each other. Well, wonder no more, the answer is that
South African law does afford you protection if the circumstances
warrant it!
Trade Mark Oppositions
For purposes of opposing a trade mark application, protection for the above mentioned scenario is provided for by Section 10(17): "a mark which is identical or similar to a trade mark which is already registered and which is well-known in the Republic, if the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of deception or confusion..."
Trade Mark Infringement
For purposes of trade mark infringement, protection is provided for by Section 34(1)(c) which provides that "rights acquired by registration of a trade mark shall be infringed by the unauthorised use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trade mark registered, if such trade mark is well-known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception".
Discussion
In order to rely on the above-mentioned provisions of the Trade Marks Act, your trade mark must be registered, and it must also be well-known. The trade mark must be well-known specifically within the Republic of South Africa, and it must be well-known to the "relevant public". That group of persons will differ depending on the nature of the goods or services in issue. There need not be any likelihood of confusion or deception caused by the third party's use of the infringing mark or trade mark application. These provisions are often referred to as the "anti-dilution" provisions of the Act.
Although there is no set formula in determining if a trade mark is well-known, what can be of assistance in making this determination is conducting an independent market survey in South Africa where consumer recognition of your brand can be studied and presented statistically, relying on evidence of use of your mark, sales figures and advertising figures, especially within South Africa.
Another important aspect of the abovementioned provisions is that the third party's infringing mark or trade mark application being opposed must be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark. Taking unfair advantage of means that the third party's mark is likely to ride on the coattails of your registered trade mark which you have spent years and money developing. If this is allowed, it could be catastrophic to the reputation of your trade mark. This is so, since you, as a proprietor of the trade mark, would not have any control over the quality of the third party's products. If the third party's products harm consumers, this would be detrimental to the reputation and character of your trade mark. Again, uncontrolled use of your trade mark by third parties could also result in dilution, and your brand becoming a widely used, generic term. This erodes the core purpose of a trade mark to protect brand exclusivity and serve a distinguishing function, and can be fatal to a trade mark.
In conclusion, the South African Trade Marks Act does provide protection to the proprietors of registered trade marks, if the trade marks are well-known, even if the third party is using or has applied to register a mark that is identical and/or confusingly similar to your mark, but for totally different goods or services, and in the absence of deception or confusion.
In these instances, it may also be possible to rely on copyright, particularly where a logo is copied, being an artistic work in terms of the Copyright Act of 1978, and has been adapted or reproduced without the author's authority. In this instance too, deception or confusion is not a consideration.
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.
