Unit 4.4 – Trade Mark Infringement Flashcards
General rule on infringment of TM
Once a trade mark is registered, its owner can take action
against third parties who use similar trade marks, through
sections 34 and 35 of the Act
Section 34 of the Trademark Act
34(1)(a) & (b):
These provisions state that a registered trademark can be infringed if another mark is used that is so similar to the registered trademark that it could confuse consumers.
This applies in cases where the goods or services provided by both parties are either the same or similar.
34(1)(c):
This is known as the dilution provision. It states that a registered trademark can be infringed if another party uses a similar mark, even if there is no likelihood of confusion.
The key issue here is the dilution of the registered trademark’s distinctiveness or reputation.
34(1)(c)
This is known as the dilution provision.
It states that a registered trademark can be infringed if another party uses a similar mark, even if there is no likelihood of confusion.
The key issue here is the dilution of the registered trademark’s distinctiveness or reputation.
❖ Section 35
➢ Provides for the infringement of a well-known international
trade mark even if it has not been registered or used in South
Africa.
Section 10 vs Section 34
➢ Section 10
▪ Registrability/Registration
➢ Section 34
▪ Infringement/Use
Section 34(1)(a) & (b) and Section 35
➢ Trade mark owners must satisfy the court of the likelihood of
confusion or deception between the registered trade mark
and the allegedly infringing mark.
➢ However, in terms of section 34(1)(c) this is obviously not the
case as you simply prove dilution.
Reconciling s10 and s34
Well-Known Trademarks:
Section 10(6):
This section addresses well-known trademarks, even if they are not registered in the Republic of South Africa.
Section 34(1)(c) and Section 35 Infringement:
These sections can be applied to protect well-known trademarks.
Section 34(1)(c): Deals with trademark dilution, protecting well-known trademarks from use that would harm their reputation or distinctiveness, even without consumer confusion.
Section 35: Provides further protection for well-known trademarks under international conventions, recognizing the rights of these trademarks in South Africa even if they are not registered locally.
Inherent Deception/Illegal Trademarks
➢ This is dealt with in sections 10(13) and 10(14).
➢ Section 34(1)(a) & (b) infringement can be applied.
Dilution
Only dealt with in terms of section 34(1)(c)
Considering the Deception and Confusion Test
➢ The concept of deception and confusion between trade
marks is at the heart of trade mark law.
▪ Deception: Means to cause someone to believe to
believe something that is false.
▪ Confusion: Means to cause bewilderment, doubt or
uncertainty.
➢ It is a fundamental issue of equivalent importance to that of
the capability of a trademark to distinguish goods/services as
to origin
The Steps in the Process of deception and confusion tets
➢ Refusal of an application for Registration (1)
▪ This is where the Registrar refuses because the mark
doesn’t meet the requirements.
▪ Essentially it fails on its own merits.
➢ Opposition to Registration (2)
▪ Remember that you must publish a trade mark in the
Patent Journal to allow for possible opponents to oppose
its registration.
➢ Removal or Cancellation of a Trade Mark (3)
▪ See sections 24, 26 and 27 as detailed earlier.
➢ Infringement (4)
▪ Requires the trade mark to be registered.
▪ Then the owner can take action against 3rd Parties.
Sections dealing with an interested party
Sections 24, 26 and 27 provide that any interested person
can apply for rectification of the register.
Evidence requirement in proving that person is an interested person
The evidence must show that the applicant for rectification is
an interested person.
Purpose of proving youre an interested person
if someone wants to correct or update the trademark register, they must prove they have a legitimate interest in the matter.
Stanton Woodrush (Pty) Ltd def of interersted person
Genuine Intention to Trade:
A person who intends to trade, even if they are not currently trading.
Blocked Trademark Application:
Someone who has applied for a trademark but whose registration is being obstructed by an already registered trademark.
Competitor with Narrowed Business Field:
A competitor whose potential business area is restricted due to an existing registered trademark.
Hampered Trader:
A trader whose legitimate business activities are hindered by a registered trademark.
Legal Proceedings:
If a trader uses their trademark registration as part of their argument in legal proceedings against another trader, the second trader is considered the interested person.
Section 34(1)(a)
- Unauthorised use
- in the course of trade, of a mark which identical to a registered trade mark
- or a mark nearly resembling a registered trade mark
- in relation to identical goods or services
- in respect of which a trade mark is registered and
- in a manner likely to cause deception or confusion.
Section 34(1)(b)
➢ Unauthorised use of a mark which is identical or similar to a
registered trade mark, in relation to similar goods or
services in respect of which a trade mark is registered and
where such unauthorised use is likely to cause deception or
cause confusion.
Section 34(1)(c)
➢ Unauthorised use of a mark which is identical or similar to a
registered trade mark which is well-known in South Africa in
respect of any goods or services, where the use of such trade
mark is likely to take unfair advantage of or be detrimental
to the repute or distinctive character of such registered wellknown trade mark, notwithstanding the absence of confusion or deception.
Aspects of Infringement
❖ Use of a Mark
❖ In the Course of Trade
❖ In relation to a Class of Goods or Services
❖ Use of a Mark
➢ It can be either a Registered or Unregistered trade mark. The
legal remedies will simply differ depending on which it is.
➢ It must also be used ‘in the trade mark sense’ meaning that it
must be the intention of the user to indicate origin or a
material link with the manufacturer through the use of the
mark.
In the Course of Trade
➢ Means to use it in the pursuance of commercial activity with a view for an economic advantage (profit making) and not
merely as a private matter.
In relation to a Class of Goods or Services
➢ Understanding it
▪ Goods and services are classified into classes and the use
must be regarding such classification.
▪ Schedule 3 of the Regulations provide for the 34 classes
of goods and 11 classes of services.
▪ It must fall within one of them.
➢ One Good, Many Classes
▪ Apple falls within 3 classes:
* Class 9 → Electric and Scientific Devices
* Class 35 → Advertising and Business Services
* Class 42 → Computer, Scientific and Legal Services
Owner’s burnder ito Unauthorised Use of Trademarks
The trademark owner must show that they did not authorize the third-party use of their trademark.
Doctrine of Exhaustion of Rights ito
Unauthorised Use of Trademarks
Once goods are manufactured and sent to market with permission, there is an implied authorization for those goods to be sold under the trademark.
Even if goods are resold without the trademark owner’s express authority, they are still considered genuine and do not amount to infringement.
Manufacturer’s Restriction ito Unauthorised Use of Trademarks
Manufacturers may want to restrict the resale of their products to maintain brand image and control distribution (e.g., luxury brands like Louis Vuitton preferring their products only be sold at premium stores).
Parallel Importation ito Unauthorised Use of Trademarks
Third parties might purchase genuine goods from approved vendors not for personal use, but to resell them elsewhere for profit.
This is known as parallel importation.
Despite the goods being resold without express authority, they remain genuine, and parallel importation does not constitute trademark infringement.
Section 34(2)(d):
Parallel Importation
This section explicitly states that parallel importation does not constitute trademark infringement. This means that genuine goods imported from another country, even without the trademark owner’s permission, are not considered infringing as long as they remain genuine.
Television Radio Centre (Pty) Ltd case (unauthorised use)
Alteration of Genuine Goods:
The case involves the unauthorized importation and modification of Sony cassette recorders by Television Radio Centre.
These recorders were initially manufactured for use in the UK, but Television Radio Centre altered them so they could be used in South Africa (RSA).
Court’s Ruling:
The court held that once genuine goods are altered to the extent that they are no longer considered genuine, the principles of parallel importation no longer apply.
Example: In this case, by changing the technical nature of the cassette recorders, Television Radio Centre made them non-genuine. Consequently, their actions constituted trademark infringement.
Assessment of Goods:
The court emphasized that in determining whether goods remain genuine, it is important to consider the nature of the goods and the nature, purpose, and extent of the alterations.
PAG Ltd case (unauthorised use)
Facts: Electric batteries were reconditioned.
Court’s Ruling: The reconditioned batteries were considered new products, meaning they were no longer genuine and thus infringed the trademark
Berman Bros (Pty) Ltd case (unauthorised use)
Facts: Berman Bros was refilling Sodastream gas canisters with a different gas.
Arguments: Sodastream claimed this infringed their trademark.
Court’s Consideration: The court examined whether the trademark applied to just the container or the contents as well.
Ruling: The court found infringement, but only where the canisters were labeled as “Guaranteed filled by authorized Sodastream Distributor.”
MCT Labels SA case (unauthorised use)
Facts: A manufacturer was permitted to produce goods under a trademark as genuine but produced additional goods with the same trademark without authorization.
Court’s Ruling: The court held this was infringement because the manufacturer exceeded the scope of the original agreement.
Beecham Group plc case (in the course of trade)
Ruling: The phrase “in the course of trade” means trade in goods or services that are the same or similar to those for which the trademark is registered.
Implication: There must be competition between the goods or services.
Verimark (Pty) Ltd case (in the course of trade)
Facts: Verimark used a BMW car in an advert for their car polish.
Ruling: The court determined that a reasonable person would see the BMW logo as linked to the car, not the polish. The car was used to illustrate the polish’s properties, not as a trademark for the polish.
Adidas AG and Another case (in the course of trade)
Facts: Adidas sued Pepkor for using two or four stripes on their footwear, similar to Adidas’s three-stripe trademark.
Key Question: Whether the stripes were used as a trademark.
Ruling: The court found that some of Pepkor’s shoes infringed Adidas’s trademark because the stripes were not merely decorative but served to distinguish the goods.
Société des Produits Nestlé S.A. v International Foodstuffs Co (in the course of trade)
Facts: Nestlé claimed that the packaging and shape of a product called ‘BREAK’ infringed on their KITKAT Finger Wafer marks.
Ruling: The court found no infringement by the packaging image or the product’s shape because customers wouldn’t link ‘BREAK’ with Nestlé’s KITKAT.
Important Point: For the shape of a product to denote origin, extensive consumer familiarization through advertising is necessary
Likelihood of Deception or Confusion ito (Of a Trade Mark which is Identical or Confusingly Similar so as
to Deceive or Cause Confusion )
The plaintiff must demonstrate, on a balance of probabilities, that the use of the infringing mark is likely to deceive or confuse consumers.
If the marks are identical, this is easier to prove. If they are similar but not identical, the court must assess the likelihood of confusion or deception
Plascon-Evans Paints Ltd case (Of a Trade Mark which is Identical or Confusingly Similar so as
to Deceive or Cause Confusion)
Court’s Findings:
The plaintiff does not need to prove that every person concerned with the class of goods would be deceived or confused; it is enough that a substantial number of people would be.
Deception or confusion is not limited to the mistaken belief that the goods come from the trademark owner; it is sufficient to show confusion as to the origin or connection of the goods.
Adidas AG case (Of a Trade Mark which is Identical or Confusingly Similar so as
to Deceive or Cause Confusion)
Court’s Findings:
The court used the inquiry established in Plascon-Evans and found that some of Pepkor’s shoes (using four stripes) infringed Adidas’s trademark, while others (using two stripes or squiggly lines) did not.
Pepkor’s defense that Adidas’s three-stripe mark was so famous that no confusion was possible was rejected. The court ruled that the fame increased the likelihood of confusion.
The argument that the goods were sold in different markets at lower prices was also dismissed, as even rare and momentary confusion is sufficient.
Lever Bros Port Sunlight Ltd ( Of a Trade Mark which is Identical or Confusingly Similar so as
to Deceive or Cause Confusion)
Court’s Findings:
The phrase ‘use by the defendant for trade purposes’ means using the mark in a way that can be considered fair use.
Courts compare notional use (how the mark is generally used) with actual use (how the mark is used in specific instances), and the market type is largely irrelevant to the analysis.
Elements of a Registered Trademark
▪ Device
▪ Name
▪ Signature
▪ Word
▪ Numeral
▪ Shape
▪ Configuration
▪ Pattern
▪ Ornamentation
▪ Colour
▪ Container for goods
In Connection with Goods or Services as those Covered by
the Registered Trade Mark relation to idenical class
The goods or services must be in an identical class to those covered by the registered trademark.
