TrademarksWhat is a trade mark? A trade mark is defined by the Act as ”a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing those goods or services from the same kind of goods or services connected in the course of trade with any other person”. A ‘mark’ is defined as “any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods, or any combination thereof”. What rights do you obtain from a trade mark registration? A trade mark registration confers a negative right on a trade mark proprietor to prevent others from using and/or registering a confusingly similar trade mark. What are the advantages and benefits of registration? While common law rights can be acquired through use of a trade mark, the advantages of registration are substantial. The advantages may be summarised as follows:
- registration provides an easy remedy (the action for infringement) whereby third parties may be restrained from using the same or closely similar marks;
- registration acts as a deterrent to potential infringers;
- the trade mark owner, by being in a position to offer the statutory protection of a registration, is more likely to attract licensees which can increase the chances of commercial exploitation;
- registration allows a trade mark owner or licensee to use the words ‘Registered Trade Mark’ or an abbreviation thereof such as ® in conjunction with the trade mark;
- registration affords a prima facie (but not an absolute) right to use the trade mark concerned; and
- a registration can be used as a defence in infringement proceedings.
|10(1)||a mark which does not constitute a trade mark|
|10(2)||a mark which is not capable of distinguishing or is descriptive or generic|
|10(3)||a mark in respect of which the applicant has no bona fide claim to proprietorship, or in respect of which an application has been made in bad faith|
|10(4)||a mark which the applicant has no bona fide intention to use as a trade mark, either himself or through a licensee|
|10(5)||a mark which consists exclusively of the shape, configuration, colour or pattern of goods where such shape, configuration, colour or pattern is necessary to obtain a specific technical result, or results from the nature of the goods themselves.|
|10(6)||a mark which constitutes or includes a reproduction, imitation or translation of a ‘well known’ trade mark for similar goods or services, where such use is likely to cause deception or confusion|
|10(7)||a mark which was applied for mala fide|
|10(8)||a mark which contains the national flag, armorial bearings, state emblem, official sign or hallmark of the Republic, convention country or any international organisation of which a convention country is a member|
|10(9)||a mark which contains any word, letter or device indicating state patronage|
|10(10)||a mark which is a prohibited mark|
|10(11)||a mark which consists of a container for goods or the shape, configuration, colour or pattern of goods, where the registration of such mark is or has become likely to limit the development of any art or industry|
|10(12)||a mark which is inherently deceptive, contrary to law, or contra bonos mores, or the use of which would be likely to deceive or cause confusion or offend any class of persons;|
|10(13)||a mark which, as a result of the manner in which it has been used, would be likely to cause deception or confusion|
|10(14)||a mark which is identical or similar to an earlier registration or application in respect of the same or similar goods or services, where use of the mark would be likely to deceive or cause confusion|
|10(15)||a mark which is identical or similar to an earlier application or application in respect of the same or similar goods or services, where use of the mark would be likely to deceive or cause confusion|
|10(16)||a mark which is the subject of an earlier application as contemplated in paragraph (15), if the registration of that mark is contrary to existing rights of the person making the later application for registration as contemplated in that paragraph|
|10(17)||an identical or similar mark to a registered well known mark, the use of which is likely to take unfair advantage of or be detrimental to the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion|
- that there was no bona fide use of the mark in relation to the relevant goods or services for a continuous period of five years or longer between the date of registration of the mark and a date three months prior to the application for removal;
- that the proprietor of the trade mark registration has died (in the case of a natural person), or has been dissolved (in the case of a body corporate) not less than two years prior to the application for removal and no application has been made for the recordal of an assignment.
- the unauthorised use in the course of trade in relation to the identical goods or services, of an identical mark or a mark so nearly resembling it as to be likely to deceive or cause confusion;
- the unauthorised use in the course of trade of an identical or similar mark, in relation to goods or services which are so similar that there exists the likelihood of deception or confusion;
- the unauthorised use in the course of trade in relation to any goods or services of an identical or similar mark, if the registered trade mark is well-known in the Republic and the use of the other mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trade mark.
- an interdict;
- an order for the removal of the offending trade mark or, alternatively, delivery-up of the infringing goods;
- in lieu of damages, at the option of the proprietor, a reasonable royalty which would have been payable by a licensee for the use of the trade mark concerned.
- The following are situations are defences to a claim of trade mark infringement:
- the bona fide use by a person of his own or his predecessor’s name or the name of his or his predecessor’s place of business;
- the use by any person of any bona fide description or indication of the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of his goods or services, or the mode or time of production of the goods or rendering of the services;
- the bona fide use of a trade mark in relation to goods or services where such use is reasonable to indicate the intended purpose of such goods, including spare parts and accessories or the rendering of services;
- the importation into or distribution, sale or offering for sale in the Republic of goods to which the trade mark has been applied by or with the consent of the proprietor;
- the use of a trade mark where such use is within the scope of a limitation entered in the register against the registered trade mark;
- the use of any identical, or confusingly or deceptively similar, trade mark which itself is registered.
- the goods or services are identical or similar to the goods or services in respect of which the trade mark is well-known; and
- the use is likely to cause deception or confusion.
- an unregistered trade mark is a registered trade mark;
- a part of a trade mark not separately registered, is a registered trade mark;
- a registered trade mark is registered for goods or services for which it is not in fact registered.