Unit 4.2 - Grounds for trademark protection and registrability

Question 1

What is the most crucial requirements for trademark protection and registrability in South Africa ?

Answer 1

Distinctiveness.

Question 2

Discuss the section 9.

Answer 2

• Section 9 sets the fundamental threshold for registrability: a trademark must be capable of distinguishing the goods or services of one undertaking from those of others.
• This capability can be established in two ways: inherent distinctiveness and acquired distinctiveness.

Question 3

Discuss inherent distinctiveness,

Answer 3

• Some marks are inherently distinctive by their nature.
• They are immediately recognizable as trademarks and possess the ability to distinguish goods or services without requiring prior use.
• Invented or fanciful words (e.g., Kodak, Exxon) or arbitrary marks that have no connection to the goods or service.

Question 4

Discuss acquired distinctiveness.

Answer 4

• Marks that are not inherently distinctive can still become registrable if they have acquired distinctiveness through extensive use.
• This means that, over time, consumers have come to associate the mark with a specific source for particular goods or service.

Question 5

When must distinctiveness be assessed ?

Answer 5

• At the date of application for registration.
• This means that evidence of use submitted to support acquired distinctiveness must demonstrate that the mark had already acquired a distinctive character in the marketplace before the application was filed.

Question 6

What is passing-off ?

Answer 6

• Passing off is a common law tort in South Africa that protects a trader’s goodwill, which includes the trader’s business reputation.
• Arises when a trader misrepresents their goods or services as being connected to another trader who has established goodwill, creating a likelihood of consumer confusion and potentially harming the reputable trader’s goodwill.

Question 7

What is the key element of passing-off ?

Answer 7

• Establishing that the plaintiff possesses a reputation tied to a specific mark or symbol.
• This reputation signifies that the mark has acquired distinctiveness in the marketplace, meaning consumers associate it with the plaintiff’s goods or services

Question 8

Discuss reputation.

Passing-off.

Answer 8

• The plaintiff must demonstrate that their reputation is so well-known within the target market that it holds commercial value.
• This reputation doesn’t necessitate public awareness of the trader’s identity, only an understanding that the goods or services come from a single, identifiable source.

Question 9

Why is commercial activity essential ?

Answer 9

• This reputation must be linked to the goodwill of a business, and goodwill necessitates commercial activity.
• Essentially, the plaintiff must be actively using the mark in a commercial setting for a reputation to develop and be protectable under passing off.

Question 10

Discuss the distinction between passing-off and registered trademark protection.

Answer 10

• Passing off provides legal recourse for unregistered rights, safeguarding traders who have not formally registered their trademarks but have nonetheless built a recognizable reputation.
• Conversely, trademark infringement claims under Section 34 of the Trade Marks Act require a registered trademark.
• Passing off requires the court to consider all extraneous factors when determining the likelihood of confusion.
• This contrasts with trademark infringement, where the analysis is generally more focused on the marks and goods/services themselves.