Some of the features of the New Act, in respect of trade mark oppositions, infringement, cancellation, penalties and offences:
Opposing of trade mark applications
In terms the New Act, a notice of opposition must be filed within 30 days of the advertisement of a trade mark application. The Current Act provides for the opposition of a trade mark based on limited grounds. Section 8, of the New Act, provides for further grounds of opposition, including that the mark applied for may not be misleading as to geographical origin, may not consist of the common name of goods or services or be identical to, or contain, armorial bearings, flags or other emblems. It is now also possible to oppose the registration of a mark based on a registered or unregistered well-known trade mark. The New Act sets out various factors that the Registrar may consider in determining whether a trade mark should be considered well-known.
Infringement of a registered trade mark
Once a trade mark is registered, the rights of the trade mark proprietor shall date back to the filing date of the application. It is possible to institute proceedings for trade mark infringement on the basis of a registered trade mark. Proprietors of unregistered trade marks are not without recourse, as Section 15 of the Act provides for the saving of vested rights and allows the proprietors of common-law trade marks to institute proceedings for passing-off.
Both infringement and passing off proceedings must be instituted in the Commercial Division in the High Court. One of the remedies for infringement includes, inter alia, a claim for reasonable royalties in lieu of damages.
The New Act provides for, inter alia, specific acts of infringement, such as the re-use of a proprietor’s labels etc. and for infringement where use of an identical or similar mark, in relation to any goods/services, may cause deception or association with the registered trade mark. This provision is in addition to the conventional “anti-dilution provision”, in Section 34(f) of the New Act, which provides for infringement, even where there is no confusion or deception, but where a proprietor can show that use of the offending mark will cause unfair economic prejudice through dilution of the distinctive character of the registered trade mark or take unfair advantage of the reputation of the registered trade mark or its rights holder.
Peculiar to trade mark legislation, is the provision in the New Act that a trade mark proprietor is also entitled to institute proceedings based on unfair competition, which includes acts that are contrary to honest practices in industrial or commercial practices. The right to institute action on the basis of unfair competition is generally understood to be a common law right and the scope of the is right is found in delict/tort. Accordingly, this provision appears to be superfluous.
Cancellation of a trade mark
Like the Current Act, the New Act provides for the removal of a trade mark based on non-use, for a continuous period of 5 years, after the date of registration. The New Act provides further that permitted use (use by a licensee) of trade mark shall be deemed use by the proprietor of the trade mark. There are, however, specific conditions for use to be considered licenced use, including the requirement of effective control by the licensor of the quality of the goods or services of the licensee in connection with which the trade mark is used.
Offences and Penalties
The New Act provides for a series of offences and penalties relating to the registration of a trade mark, such as the falsification of entries in the trade marks register, false representation of a registered trade mark and the forgery of trade marks. The penalties range between K3,000,000.00 (USD 4200, current rate of exchange) and K10,000,000 (USD 13900), or imprisonment of between 5 and 10 years.
Thembani Nkabinde | Candidate Attorney
Blain de Villiers | Partner
Mohamed Jameel Hamid | Associate