Unit 4.4 - Trademark rights, infringement and remedies

Question 1

For which reasons can a trademark application be
refused ?

Answer 1

• Lack of Intrinsic Registrability.
• Prohibited Marks.
• Proprietorship and Bad Faith.
• Third-Party Rights.

Section 10.

Question 2

What are the grounds for trademark infringement ?

Answer 2

• Section 34(1)(a): Identical Marks on Identical Goods/Services.
• Section 34(1)(b): Similar Marks on Similar Goods/Services.
• Section 34(1)(c): Dilution of Well-known Trademarks.
• Section 35: Infringement of Well-known Foreign Trademarks.

Question 3

Discuss section 34(1)(a).

Answer 3

Infringement occurs when:

• The mark is identical to a registered trademark.
• It is used on identical goods/services.
• There is a likelihood of consumer confusion.

Section 34(1)(b) similar.

Question 4

Discuss section 34(1)(c).

Answer 4

Infringement occurs when:

• The mark is identical or similar to a well-known registered trademark.
• It is used on any goods/services.
• The use takes unfair advantage of or is detrimental to the well-known trademark’s reputation or distinctiveness (no need for consumer confusion).

Question 5

Discuss section 35.

Answer 5

Infringement occurs when:

• The mark is similar to an unregistered foreign trademark well-known in South Africa.
• It is used on goods/services that are identical or similar to the foreign mark’s market.
• There is a likelihood of confusion or deception.

Question 6

What is the purpose of section 10 and 34 ?

Answer 6

• Section 10 ensures only registrable and distinct trademarks are protected, preventing misleading marks from being registered.
• Section 34 provides protection to registered trademarks from infringement, helping to maintain brand identity and prevent consumer confusion or dilution.

Question 7

What are the remedies available to a court in trademark infringement cases ?

Answer 7

• Interdict (stops continuing use).
• Order for removal or delivery up (remove infringing trademark from products).
• Damages (financial compensation for losses).
• Reasonable royalty (payment for unauthorized use).

Section 34(3).

Question 8

Are there other additional remedies ?

Answer 8

• Anton Piller Orders: A pre-trial order allowing the trademark owner to seize infringing goods from the infringer’s premises to prevent evidence destruction.
• Corrective Advertising: The court may order the infringer to conduct advertising that corrects any consumer confusion caused by the infringement.

Question 9

Which factors influences the choice of remedy ?

Answer 9

• If immediate action is needed, an interdict is preferred.
• If the owner has suffered significant financial losses, damages or a reasonable royalty may be sought.