In the crowded world of brands and brand noise, distinguishing your business can be challenging. A strong, recognisable brand, symbolised by your trademark, can help you stand out from the competition. However, protecting your trademark from imitation and infringement is a crucial part of maintaining your brand’s integrity. Here’s a simplified guide to trademark protection in South Africa.
Registering your trademark with the Registrar of Trademarks is a proactive measure to legally protect your brand. However, even unregistered trademarks are not entirely defenceless, as common law and legislation offer some level of protection against abuse.
Registered trademarks benefit from statutory protection under Section 34 of the Trade Marks Act 194 of 1993 (TMA). Under Section 34(1)(a), it’s forbidden for others to use a mark that’s identical or very similar to your registered trademark for the same type of goods and services.
Moreover, Section 34(1)(b) extends this prohibition to similar goods and services not directly covered by your registered trademark. For instance, if your registered trademark is “ElegantScents” for perfumes, another company is not allowed to use “ElegantSense” for clothing.
Section 34(1)(c), also known as the “anti-dilution” provision, prevents others from using a mark identical or similar to a well-known registered trademark if it’s detrimental to or unfairly exploits the established trademark’s reputation. For instance, a new company using a mark like “Fruitytiser” for fruit-based beverages might infringe on the well-known “Appletiser” trademark for apple-based beverages.
Unregistered trademarks are not left unprotected. The common law principle of passing-off defends against other companies attempting to impersonate their products as associated with an unregistered trademark, which could harm the owner’s reputation. However, the enforcement of a common law trademark is a much more difficult task.
In the case of well-known foreign trademarks not formally registered in South Africa, the trademark owner can seek relief under Section 35 of the TMA. As established by the McDonald’s Corporation case, a mark is considered “well-known” if it’s recognised within the specific market for the branded goods or services, and a significant portion of the target market must be aware of the mark.
If you find your trademark is being infringed upon, the law provides five remedies under Section 34(3):
- An interdict to prohibit any use of the infringing mark.
- The court may order the removal of the infringing mark or the delivery of all material bearing the mark.
- Claim damages based on actual financial loss.
- Request reasonable royalties based on a fair royalty fee.
- An Anton Piller order may be granted to preserve evidence if it’s suspected that the infringer would destroy or remove evidence during legal proceedings.
Trademark protection is a cornerstone of brand integrity and marketplace competition. Whether registered or not, your trademarks are legally significant and must be defended. By understanding and enforcing your trademark rights, you can confidently operate in the marketplace, maintaining your brand’s distinctive presence and consumer trust amid a wide array of choices.
by Stefaans Gerber (Senior Associate) and Chene Biela (IP Law Student)