TRADE MARKS IN SOUTH AFRICA
The nature of
trade marks
Trade marks are,
generally speaking, marks used, or proposed to be used, by a person
in relation to goods or services for the purpose of distinguishing
those goods or services from the same kind of goods or services
connected in the course of trade with any other person.
A ‘mark’ is defined
as any sign capable of being represented graphically, including
a device, name, signature, word, letter, numeral, shape, configuration,
pattern, ornamentation, colour or container for goods, or any combination
thereof.
A ‘device’ is defined
as any visual representation or illustration capable of being reproduced
upon a surface, whether by printing, embossing or by any other
means.
The right to
use a trade mark
It
is important to emphasise that registration of a trade mark does
not necessarily confer an absolute right to use the mark. Prior
rights to a relevant mark, recognised by law, may have been secured
in ways other than by registration.
Thus, it is conceivable
that the proprietor of some confusingly similar trade mark may be
in a position to object to registration or use of the selected mark
on the basis that:
• he has acquired
common law rights by virtue of use of the mark in this country in
relation to the same or similar goods or services; or
• his mark has
acquired an international reputation and has become entitled to
protection under the Paris Convention as a mark well-known in South
Africa, even though it may never have been used here.
Prior rights may
also have been acquired by another person, carrying on business
as an enterprise dealing in the same or associated goods or offering
the same services, under a business name (even an unregistered trading
style) bearing a confusing resemblance to the proposed trade mark.
That person may have grounds for opposing the registration or restraining
the use of the trade mark.
The advantages
and benefits of registration
While common law
rights can be acquired through use of a trade mark, the advantages
of registration are substantial. The advantages may be summarised
as follows:
•
registration provides an easy remedy (the action for infringement)
whereby third parties may be restrained from using the same or closely
similar marks;
• registration
acts as a deterrent to potential infringers;
•
the trade mark owner, by being in a position to offer the statutory
protection of a registration, is more likely to attract licensees;
•
registration allows a trade mark owner or licensee to use the words
‘Registered Trade Mark’ or an abbreviation thereof in conjunction
with the trade mark; and
•
registration affords a prima facie (but not an absolute) right to
use the trade mark concerned.
Requirements
for a trade mark to be registrable
In order to be
registrable, a trade mark must be capable of distinguishing the
goods or services of one person from the goods or services of another
person. A trade mark will be considered capable of distinguishing
if, at the date of application, it is inherently capable of distinguishing
or if it has become capable of distinguishing by reason of its prior
use.
Any trade mark
which is proved distinctive will probably be registrable, provided
that it is not expressly excluded from registration in terms of
the Act. Trade marks which are specifically excluded from registration
in terms of the Act include:
•
a mark which does not constitute a trade mark, or is not capable
of distinguishing, or which merely designates specific characteristics
of the goods or services, or which has become customary in the current
language or established trade practices;
•
a mark in respect of which the applicant has no bona fide claim
to proprietorship, or in respect of which an application has been
made in bad faith;
•
a mark which the applicant has no bona fide intention to use as
a trade mark, either himself or through a licensee;
•
a mark which consists exclusively of the shape, configuration, colour
or pattern of goods where such shape, configuration, colour or pattern
is necessary to obtain a specific technical result, or results from
the nature of the goods themselves. This is a total prohibition
and no amount of use will qualify such a mark for registration;
•
a mark which constitutes or includes a reproduction, imitation or
translation of a ‘well known’ foreign trade mark for similar goods
or services, where such use is likely to cause deception or confusion;
•
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 dilute, take
unfair advantage of, or be detrimental to the distinctive character
or repute of the well-known trade mark;
•
a mark which is inherently deceptive, contrary to law, or contra
bonos mores, or the use of which would be likely to deceive or cause
confusion or offend any class of persons;
•
a mark which is identical or similar to an earlier registration
or application in respect of the same or similar goods or services,
where use of both marks would be likely to deceive or cause confusion;
•
a mark which, as a result of the manner in which it will be used,
would be likely to cause deception or confusion;
•
a mark which consists of or contains the national flag or armorial
bearings, or a state emblem or official sign of the Republic
of South Africa or certain
other countries and international organisations.
Application
for registration
Applicant
Any person with
a bona fide intent to use a mark as a trade mark, either himself
or through any person permitted by him to use the mark (ie. a licensee),
may file an application for its registration.
Classification
of trade marks
Goods and services
are classified into classes for purposes of registration (34 classes
for goods; 11 classes for services). A separate application must
be filed in each class in which protection is desired.
Procedure
All applications
undergo examination by the Trade Marks Office to determine inherent
registrability as well as possible conflict with prior registrations
or applications. After examination, the Trade Marks Office will
either accept the application or preliminarily refuse it or indicate
the conditions subject to which it may be accepted. If there is
a preliminary refusal or conditional acceptance, an opportunity
is afforded the applicant to make representations to the registrar
to overcome whatever objections have been raised or to deal with
the application otherwise as circumstances may dictate.
At present the
registration procedure takes between twenty to thirty months (or
more) from the date of filing.
Once a trade mark
application has been accepted, it is advertised in the Patent Journal.
Opposition proceedings against a trade mark application are very
similar to motion proceedings in the High Court. In the absence
of objections by third parties within three months of the advertisement
date, the application will proceed to grant and a certificate of
registration will be issued.
Opposition
to registration
Opposition
proceedings against a trade mark application may be lodged by any
interested person within three months after the advertisement of
the acceptance of the application. The opposition period may be
extended by the registrar, for example to allow time for negotiation
between the parties.
The
grounds on which an application may be opposed generally include
the grounds on which a mark will be excluded from registration,
as set out above.
Opposition
proceedings are initiated by filing a notice of opposition and are
very similar to motion proceedings in the High Court. The matter
is eventually heard by the Registrar of Trade Marks (or by a person
appointed in terms of section 6(3) of the Act). The registrar (or
appointed person) has judicial powers equivalent to those of a judge
of the High Court.
Removal
of a trade mark
Application
may be made by any interested person for the removal of a registered
trade mark on any one or more of the grounds for removal contemplated
in the Act. These include:
•
that the trade mark is excluded from registration in any one or
more of the circumstances as set out above;
•
that the use of the trade mark failed to comply with a condition
for registration;
•
that there was no bona fide intention to use the mark at the time
of the application for registration and there has in fact been no
bona fide use of the mark in relation to the relevant goods or services
up to a date three months prior to the application for removal;
•
that there was no bona fide use of the mark in relation to the relevant
goods or services for a continuous period of five years or longer
between the date of registration of the mark and a date three months
prior to the application for removal;
•
that the proprietor of the trade mark registration has died (in
the case of a natural person), or has been dissolved (in the case
of a body corporate) not less than two years prior to the application
for removal and no application has been made for the recordal of
an assignment.
The provision for removal on the
basis of non-use will not apply if the non-use was due to special
circumstances in the trade and not to an intention to abandon the
mark.
Infringement
There are three
types of trade mark infringement namely:
•
the unauthorised use in the course of trade in relation to the same
goods or services, of an identical mark or a mark so nearly
resembling it as to be likely to deceive or cause confusion;
•
the unauthorised use in the course of trade of an identical or similar
mark, in relation to goods or services which are so similar that
there exists the likelihood of deception or confusion;
•
the unauthorised use in the course of trade in relation to any
goods or services of an identical or similar mark, if the registered
trade mark is well-known in the Republic and the use of the other
mark would be likely to take unfair advantage of, or be detrimental
to, the distinctive character or repute of the registered trade
mark.
The remedies for
infringement are as follows:
•
an interdict;
•
an order for the removal of the offending trade mark or, alternatively,
delivery-up of the infringing goods;
•
damages;
•
in lieu of damages, at the option of the proprietor, a reasonable
royalty which would have been payable by a licensee for the use
of the trade mark concerned.
The following are
situations in which the use of a mark does not amount to
infringement:
•
the bona fide use by a person of his own or his predecessor’s name
or the name of his or his predecessor’s place of business;
•
the use by any person of any bona fide description or indication
of the kind, quality, quantity, intended purpose, value, geographical
origin or other characteristics of his goods or services, or the
mode or time of production of the goods or rendering of the services;
• the bona fide
use of a trade mark in relation to goods or services where such
use is reasonable to indicate the intended purpose of such goods,
including spare parts and accessories or the rendering of services;
• the importation
into or distribution, sale or offering for sale in the Republic
of goods to which the trade mark has been applied by or with the
consent of the proprietor;
• the use of
a trade mark where such use is within the scope of a limitation
entered in the register against the registered trade mark;
• the use of
any identical, or confusingly or deceptively similar, trade mark
which itself is registered.
Protection of
well-known trade marks
Protection is also
available to the proprietor of a well-known trade mark, whether
or not such person carries on business or has any goodwill in the
Republic, against the unauthorised use of a mark which constitutes
a reproduction, imitation or translation of the well-known trade
mark, where:
• the goods
or services are identical or similar to the goods or services in
respect of which the trade mark is well-known; and
• the use is
likely to cause deception or confusion.
A ‘well-known’
foreign trade mark is one which is well known in the Republic as
being the mark of a person entitled to protection under the Paris
Convention (whether or not such a person carries on business or
has any goodwill in the Republic).
In determining whether a trade mark is well known in the Republic,
due regard is given to the knowledge of the trade mark in the relevant
sector of the public, including knowledge which has been obtained
as a result of the promotion or advertisement of the trade mark.
The required degree of awareness of the trade mark has been held to
mean knowledge by a substantial number of persons in the relevant
sector of the public.
Duration and
renewal
A trade mark is
registered for a period of ten years, calculated from the date of
the original application, and the registration may be renewed in
perpetuity for periods of ten years on application in the prescribed
manner and on payment of the renewal fees.
International
arrangements
Any person who
has applied for registration of a trade mark in a ‘convention country’
enjoys a so-called priority right. In terms of this right, the
applicant is entitled, in priority to other applicants, to registration
of the same trade mark in any other convention country, provided
an application is made in such other convention country within six
months from the application date in the first convention country.
Any such registration in another convention country gets the same
date as the date of application in the first convention country.
South
Africa is a convention country.
A country becomes a convention country by acceding to the international
Paris Convention.
Offences
It is an offence
to represent that:
•
an unregistered trade mark is a registered trade mark;
•
a part of a trade mark not separately registered, is a registered
trade mark;
•
a registered trade mark is registered for goods or services for
which it is not in fact registered.
A person who is
found guilty of any of the above offences is liable to a fine or
to imprisonment for a period not exceeding 12 months.
|
