Trade marks - Litigation

An owner, and in some instances a registered user, of a registered trade mark may institute trade mark infringement proceedings based on the following grounds:

• Where a person is making unauthorised use of an identical mark, or a mark which so nearly represents the registered mark, in the course of trade, in relation to the same goods and/or services for which the mark is registered, which is likely to deceive or cause confusion.
   
• Where a person is making unauthorised use of a mark, which is the same or similar as a registered mark, in the course of trade, in relation to goods or services which are similar to the goods or services covered by the registered mark, which is likely to deceive or cause confusion.
   
• Where a person is making unauthorised use of a registered mark, or an essential part thereof, which is well-known in South Africa, in a manner which is likely to take unfair advantage of, or be detrimental to the distinctive character, or repute of the registered trade mark. The use in this instance, may be in relation to any goods or services, not only the goods or services covered by the specification of the registered trade mark.

• The mark does not constitute a trade mark as defined in the Trade Marks Act.
   
• The mark is not capable of distinguishing the goods/services for which registration is sought from the same goods/services of another trader in the same sector.
   
• The mark consists solely of a sign or indication which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, other characteristics and/or method or time of production of the goods/service for which registration is sought.
   
• The mark consists exclusively of a sign or indication which has become customary in the current language or in the bona fide established trade practices of the trade.
   
• The applicant is not the bona fide proprietor of the trade mark.
   
• The application was made with a lack of bona fide intention to use the mark as a trade mark.
   
• The application was made mala fide or in bad faith.
   
• The mark consists exclusively of a shape, configuration, colour or pattern which is necessary to obtain a technical result or results from the nature of the goods themselves.
   
• The mark consists of a container of goods, shape, configuration, colour or pattern of goods and such registration is likely to limit development of art or industry.
   
• The mark constitutes a reproduction, imitation or translation of a mark or an essential part of a mark which is well-known in terms of the Paris Convention.
   
• The mark contains the state symbols including the national flag of South Africa, symbols and emblems of any convention country and/or certain recognised international organisations.
   
• The mark contains a word, letter or device indicating state patronage.
   
• The mark is a prohibited mark as provided for in the Merchandise Marks Act 17 of 1941.
   
• The mark is inherently deceptive or use thereof would be likely to deceive or cause confusion amongst consumers.
   
• The mark is contrary to law, for example, constitutes copyright infringement.
   
• The mark is contra boni mores / offends against morality.
   
• The mark is likely to give offence to any class of persons.
   
• The use of the mark is likely to deceive or constitute confusion, as it is the same or similar to a prior registered trade mark and covers the same or similar goods/services as such prior registration.
   
• The use of the mark is likely to deceive or constitute confusion, as it is the same or similar to a prior application and covers the same or similar goods/services as such prior application.
   
• The mark which is subject of an earlier application which is confusingly similar, if such registration is contrary to the existing rights of the person making the later application.
   
• The mark is the same or identical to a trade mark which is already registered and well-known in South Africa, if use of the mark sought to be registered is likely to take unfair advantage of, be detrimental to the distinctive character or the repute of the registered trade mark, notwithstanding the absence of deception or confusion.

Trade mark expungement:
Any interested person may apply to the Registrar of Trade Marks or the High Court of South Africa to cancel/expunge a trade mark registration.

A registered trade mark may be removed on the following grounds:

• Where the mark no longer constitutes a trade mark as defined in the Trade Marks Act.
   
• Where a proprietor is in breach of a condition of registration.
   
• If a mark has not been used for a continuous period of 5 years or longer from the date of registration.
   
• Where a trade mark has been registered in the name of a company which has been dissolved and the trade mark has not been assigned to another party within 2 years from the dissolution.
   
• Where a trade mark has been registered in the name of an individual and such individual died and the trade mark has not been assigned to another party within 2 years from such death.

• A substantial amount of goodwill and/or reputation vests in the name, mark or get-up in question and that such goodwill or reputation is associated with the plaintiff.
   
• The defendant has made a representation which is likely to confuse members of the public and lead them to believe that there is some connection between the respective traders.
   
• Such deception or confusion is likely to cause damages to the plaintiff's goodwill.

Tel no: +27 (0) 12 664 8960 Fax no: + 27 (0) 86 633 2977 or +27 (0) 12 644 2515