Trade mark protection & enforcement in South Africa

The right to use a trade mark and the nature of the protection obtained

It is important to emphasise that registration of a trade mark does not necessarily confer an absolute right to use the mark. Prior rights or an interest, recognised by law, to a relevant mark 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, successfully, 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 goods or services the same as, or similar to those of interest; or
• his mark, in consequence, for example, of an international reputation or of other circumstances, has become entitled to protection under the International Convention as a mark well-known in South Africa even though it may never have been used here.

Prior rights may have been acquired by another, for example by carrying on business in an enterprise dealing in the relevant goods or offering the relevant services, or associated goods or services, under a name (albeit merely 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.

Accordingly, it is advisable for a trade mark owner intending to launch a newly adopted mark commercially to take the following preliminary steps:

• to have a search conducted through the official records at the Trade Marks Office in Pretoria, in order to determine whether there are any marks on record encompassing the same or similar goods or services, and which are identical to or colourably resemble the mark he has chosen;
• to have a search conducted through the official records at the Companies Office in Pretoria, in order to determine whether there are any companies or close corporations registered with a name similar to the proposed trade mark; and
• to make appropriate investigations in trade circles in order to establish whether anyone is using (with or without the benefit of registration) the same or a confusingly similar mark (whether as a trade mark, business or trading style, as part of the name of a company or close corporation, or otherwise) in a business concerned with or relating to goods or services the same as or similar to the goods or services which he intends to produce or offer under his selected trade mark.

A search at the Trade Marks Office will indicate whether a given mark is anticipated by a prior registration or pending application for the same or a confusingly similar mark relating to goods or services which are the same as or similar to those in relation to which the new mark is intended to be used. The records at the Trade Marks Office are, however, confined to trade marks either registered or in the process of registration. There are no official records of trade marks which are merely in use. There are, of course, trade directories which purport to list trade marks in use, but these should be consulted with caution.

Apart from possible errors in the official indices, a search is not necessarily decisive as to availability, since it does not, as already pointed out, disclose conflicting marks which are already being used (but have not been registered) by other persons who, by virtue of prior use, may have a preferent right to registration.

Anyone initiating use of a new trade mark assumes a calculated business risk and no absolute assurance of future untrammelled use can be furnished. The risk can, however, be reduced by carrying out the aforementioned precautionary measures.

Advantages and benefits of registration

While common law rights are acquired through use of a trade mark, the advantages of registration are substantial and should not be underestimated. The advantages may be summarised as follows:

• an easy remedy (an action for infringement) is afforded whereby third parties may be restrained from using the same or closely similar marks (for further information regarding infringement proceedings, please click here;
• it 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;
• it allows a trade mark owner or licensee to use the legend Registered Trade Mark or a suitable abbreviation thereof in conjunction with the trade mark; and
• it affords a prima facie (but not, it must be stressed, an absolute) right to use the trade mark concerned.