Unit 4.4 – Trade Mark Infringement

Question 1

General rule on infringment of TM

Answer 1

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

Question 2

Section 34 of the Trademark Act

Answer 2

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.

Question 3

34(1)(c)

Answer 3

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.

Question 4

❖ Section 35

Answer 4

➢ Provides for the infringement of a well-known international
trade mark even if it has not been registered or used in South
Africa.

Question 5

Section 10 vs Section 34

Answer 5

➢ Section 10
▪ Registrability/Registration
➢ Section 34
▪ Infringement/Use

Question 6

Section 34(1)(a) & (b) and Section 35

Answer 6

➢ 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.

Question 7

Reconciling s10 and s34

Answer 7

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.

Question 8

Inherent Deception/Illegal Trademarks

Answer 8

➢ This is dealt with in sections 10(13) and 10(14).
➢ Section 34(1)(a) & (b) infringement can be applied.

Question 9

Dilution

Answer 9

Only dealt with in terms of section 34(1)(c)

Question 10

Considering the Deception and Confusion Test

Answer 10

➢ 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

Question 11

The Steps in the Process of deception and confusion tets

Answer 11

➢ 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.

Question 12

Sections dealing with an interested party

Answer 12

Sections 24, 26 and 27 provide that any interested person
can apply for rectification of the register.

Question 13

Evidence requirement in proving that person is an interested person

Answer 13

The evidence must show that the applicant for rectification is
an interested person.

Question 14

Purpose of proving youre an interested person

Answer 14

if someone wants to correct or update the trademark register, they must prove they have a legitimate interest in the matter.

Question 15

Stanton Woodrush (Pty) Ltd def of interersted person

Answer 15

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.

Question 16

Section 34(1)(a)

Answer 16

• 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.

Question 17

Section 34(1)(b)

Answer 17

➢ 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.

Question 18

Section 34(1)(c)

Answer 18

➢ 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.

Question 19

Aspects of Infringement

Answer 19

❖ Use of a Mark
❖ In the Course of Trade
❖ In relation to a Class of Goods or Services

Question 20

❖ Use of a Mark

Answer 20

➢ 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.

Question 21

In the Course of Trade

Answer 21

➢ 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.

Question 22

In relation to a Class of Goods or Services

Answer 22

➢ 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

Question 23

Owner’s burnder ito Unauthorised Use of Trademarks

Answer 23

The trademark owner must show that they did not authorize the third-party use of their trademark.

Question 24

Doctrine of Exhaustion of Rights ito
Unauthorised Use of Trademarks

Answer 24

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.

Question 25

Manufacturer's Restriction ito Unauthorised Use of Trademarks

Answer 25

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).

Question 26

Parallel Importation ito Unauthorised Use of Trademarks

Answer 26

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.

Question 27

Section 34(2)(d): Parallel Importation

Answer 27

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.

Question 28

Television Radio Centre (Pty) Ltd case (unauthorised use)

Answer 28

**Alteration of Genuine Goods:** 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. **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**.

Question 29

PAG Ltd case (unauthorised use)

Answer 29

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**

Question 30

Berman Bros (Pty) Ltd case (unauthorised use)

Answer 30

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."**

Question 31

MCT Labels SA case (unauthorised use)

Answer 31

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.**

Question 32

Beecham Group plc case (in the course of trade)

Answer 32

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.

Question 33

Verimark (Pty) Ltd case (in the course of trade)

Answer 33

Facts: Verimark used a BMW car in an advert for their car polish. Ruling: the court found that viewers would recognize the BMW logo as part of the car and not as a brand for the polish being advertised. This use was considered acceptable because it didn’t confuse consumers about the source of the polish.

Question 34

Adidas AG and Another case (in the course of trade)

Answer 34

the court found that Pepkor's use of stripes on their shoes **was more than just a design choice**—it **acted as a brand identifier, similar to Adidas's well-known three-stripe trademark**. Therefore, this use was seen as infringing on Adidas's trademark rights.

Question 35

Société des Produits Nestlé S.A. v International Foodstuffs Co (in the course of trade)

Answer 35

the court decided that the 'BREAK' product’s packaging and shape didn’t infringe on KITKAT’s trade marks because consumers wouldn’t link the two. The ruling emphasized that **for a product’s shape to be recognized as a brand indicator, it needs significant advertising to make consumers familiar with it.**

Question 36

Proving Likelihood of Deception or Confusion

Answer 36

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**

Question 37

Plascon-Evans Paints Ltd case (Of a Trade Mark which is Identical or Confusingly Similar so as to Deceive or Cause Confusion)

Answer 37

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.**

Question 38

Adidas AG case (Of a Trade Mark which is Identical or Confusingly Similar so as to Deceive or Cause Confusion)

Answer 38

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.**

Question 39

Lever Bros Port Sunlight Ltd ( Of a Trade Mark which is Identical or Confusingly Similar so as to Deceive or Cause Confusion)

Answer 39

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.** (we focus on how it's used not where)

Question 40

Elements of a Registered Trademark

Answer 40

▪ Device ▪ Name ▪ Signature ▪ Word ▪ Numeral ▪ Shape ▪ Configuration ▪ Pattern ▪ Ornamentation ▪ Colour ▪ Container for goods

Question 41

In Connection with Goods or Services as those Covered by the Registered Trade Mark relation to **identical class**

Answer 41

The goods or services must be in an identical class to those covered by the registered trademark.

Question 42

registered trade mark

Answer 42

Definition: * A registered trademark is officially registered under the Act. Symbol: * Registered: The ® symbol. * Applying: The 'TM' symbol can be used when applying. Use of the Symbol: * 'TM' during the application process. * '®' once the trademark is registered under the Act. Legal Remedies: * The owner can seek legal remedies for infringement as per the Act/Legislation. Duration: * Valid for 10 years and can be renewed upon expiration. Recognition and Enforceability: * Recognized and protected nationwide, allowing the owner to prevent third-party use anywhere in the country.

Question 43

Non-Registered Trademarks

Answer 43

Definition: * An unregistered trademark is not registered under the Act. Symbol: * The 'TM' symbol is used. Use of the Symbol: * Only the 'TM' symbol can be used, not the 'R' symbol. Legal Remedies: * Remedies are available under common law. Duration: * The owner must prove the reputation duration in the market. Recognition and Enforceability: * Protected in areas where they have gained reputation but with limited or specific scope.

Question 44

Elements of Section 34(1)(b)

Answer 44

Section 34(1)(b) addresses trademark infringement involving similar goods or services within similar classes.

Question 45

Difference from Section 34(1)(a)

Answer 45

Section 34(1)(b) includes goods and services that are 'similar' to those for which the trademark is registered. The trademark owner must demonstrate that the infringing goods or services are similar enough to the registered ones to likely cause consumer confusion.

Question 46

Danco Clothing (Pty) Ltd [diff between s34(1)(a) and s34(1)(b)]

Answer 46

Issue: Use of "FRENCH CONNECTION" for both clothing and cosmetics. Court's Factors: Nature and composition of the goods. Respective uses (or functions) of the services. Trade channels for retailing the goods or services.

Question 47

British Sugar plc case [diff between s34(1)(a) and s34(1)(b)]

Answer 47

Court's Factors: 1. Respective **uses** of the goods or services. 2. Respective **users** of the goods or services. 3. **Physical nature** of the goods or acts of service. 4. **Trade channels** for market distribution. 5. **Placement in stores** (especially for self-serve items). 6. **Competitiveness** of the goods or services. Emphasis: The similarity of goods must be considered independently of trademark similarity.

Question 48

Eating Out Web Services case [diff between s34(1)(a) and s34(1)(b)]

Answer 48

Interdependence Principle: The less the similarity between the goods or services, the greater the resemblance required between the trademarks to establish confusion or deception.

Question 49

Similarity standard ito Use of the Registered Trademark or a Similar Mark

Answer 49

No need to show confusion or deception, but the marks must be identical or similar. Bata Ltd v Face Fashions CC and Another: The term 'similar' should not be too broadly interpreted to avoid creating a monopoly.

Question 49

# ``` S34(1)(c) on the requireements to succeed

Answer 49

➢ The plaintiff must show: ▪ Unauthorised use of a trade mark. ▪ In the course of trade. ▪ In relation to any goods or services. ▪ Of a mark which is identical or similar to a registered trade mark. ▪ **Which is well known in South Africa**. ▪ In such a way that it is likely to take **unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark.**

Question 49

McDonald’s v JoBurgers Drive-Inn: (is well known in the Republic)

Answer 49

Well-known' means having a reputation among a substantial number of the public or within the trade.

Question 50

Triomed (Pty) Ltd case (is well known in the Republic)

Answer 50

Applied the same test as McDonald's for Section 35, useful for Section 34(1)(c).

Question 51

Webster and Page (is well known in the Republic)

Answer 51

Passing off applies in competitive industries; dilution applies where no direct competition exists, and confusion is not required. Additional factors considered include distinctiveness, usage duration and extent, advertising, geographical extent, trade channels, and recognition.

Question 52

Safari Surf Shop CC (is well known in the Republic)

Answer 52

Even localized recognition (e.g., 'SPIDER' in coastal areas) can qualify as well-known.

Question 53

Verimark (Pty) Ltd v BMW AG:(Unfair Advantage or Detrimental Effect)

Answer 53

Unfair advantage assessed based on consumer perception of trademark use.

Question 54

Laugh It Off Promotions: (Unfair Advantage or Detrimental Effect)

Answer 54

Section 34(1)(c) does not apply if the use constitutes fair expression.

Question 55

Webster and Page: (Unfair Advantage or Detrimental Effect)

Answer 55

Considerations include inherent distinctiveness, third-party use, and recognition.

Question 56

Use in the Course of Trade

Answer 56

Unlike Sections 34(1)(a) and 34(1)(b), which require same or similar classes, Section 34(1)(c) applies to the use of the offending mark in any class.

Question 57

Section 35 of the Trademark Act

Answer 57

Unauthorised Use of Foreign Trademarks This section deals with the unauthorized use of trademarks that are reproductions, imitations, or translations of foreign trademarks which are well-known in South Africa but not registered locally. It applies to marks belonging to individuals from Paris Convention countries, regardless of whether they conduct business in South Africa.

Question 58

Requirements for Success of s35

Answer 58

The applicant must show that: * His mark is well-known in South Africa. * He is a national of or domiciled or established in a convention country. * The offending mark is a reproduction, imitation or translation of his well-known mark. * That it is being used in relation to goods or services which are identical or similar to his goods and services. * That such use is likely to cause deception or confusion.

Question 59

McDonald’s v JoBurgers Drive-Inn (Well-Known in the Republic)

Answer 59

The court likened the protection to passing-off, prohibiting the use of the mark for well-known goods or services if it causes confusion or deception. "Well-known" is interpreted as being known within the target market, not the general population.

Question 60

Truworths v Primark (Well-Known in the Republic)

Answer 60

The level of knowledge in the relevant trade is crucial. The court examines the public sector knowledge and promotional activities that contributed to the mark's recognition.

Question 61

primary purpose of s35

Answer 61

The primary aim is to protect foreign trademarks that are well-known but not registered or used in South Africa. Section 35(1)(a) & (b): (a): Nationals. (b): Domiciled or established individuals/entities.

Question 62

Reproduction, Imitation, or Translation

Answer 62

There must be deliberate misappropriation and copying of the well-known trademark. Section 36(2) – Saving of Vested Rights Provision: If a trademark has been used continuously and in good faith since before 31 August 1991 or before the well-known mark became known in South Africa, infringement under section 35 does not apply.

Question 63

Understanding Section 35 Protecting Foreign Trademarks

Answer 63

Protection: * Section 35 protects foreign trademarks even if they are not registered or used in South Africa. * It serves as an exception to the territoriality principle, giving owners of well-known marks additional protection against infringement.

Question 64

Consumer Protection

Answer 64

This section ensures that consumers are not misled or confused by similar marks, even if those marks are not registered locally.

Question 65

Key Aspects (Simplified) Territorial Recognition:

Answer 65

The foreign trademark must be well-known within the South African market.

Question 66

Use for Identical or Similar Goods

Answer 66

Protection applies where the infringing use is related to goods or services identical or similar to those for which the mark is well-known.

Question 67

Likelihood of Confusion

Answer 67

Determining infringement hinges on whether the unauthorized use is likely to cause confusion or deception.

Question 68

Course of Trade

Answer 68

The use must be in pursuit of economic advantage (profits).

Question 69

Steps of determing infringement

Answer 69

Step 1: Use as a Trade Mark in the Course of Trade Step 2: Apply the Provisions of Section 35(3) Step 3: Make a Value Judgment

Question 70

Step 1: Use as a Trade Mark in the Course of Trade

Answer 70

Case Reference: AM Moolla Group Ltd **Qualifying for Protection:** The first step is to establish that the mark qualifies for protection under Section 35(1) and 35(1A) of the Companies Act. **Testing for Infringement:** Only after confirming the mark's eligibility for protection can we test for infringement under Section 35(3). **Well-Known Mark:** Infringement can only be found if the foreign trade mark was well-known at the time it was reproduced, imitated, or translated by a local enterprise.

Question 71

Step 2: Apply the Provisions of Section 35(3)

Answer 71

Assess the Offending Mark: Reproduction, Imitation, or Translation: Determine if the offending mark is a reproduction, imitation, or translation of a mark that is well-known in the Republic, either fully or in part. This requires more than just similarity; there must be deliberate misrepresentation and copying. Assess the Goods or Services: Identical or Similar: Evaluate if the offending mark is being used concerning goods or services that are identical or similar to those for which the well-known mark is recognized in the Republic. Assess the Level of Awareness: Case Reference: McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd Sufficient Awareness: A sufficient number of people must be familiar with the mark to entitle it to protection. Section 35(1A) Requirements: Knowledge of the mark in the relevant public sector. Knowledge obtained through promotion of the mark (use exception). The mark must be known to a substantial number of such persons.

Question 72

Step 3: Make a Value Judgment

Answer 72

After gathering and analyzing all relevant information, a value judgment must be made to determine whether infringement has occurred. This involves weighing the evidence and considering the impact on the rights of the trade mark holder.

Question 73

Sections for Direct Infringement

Answer 73

Section 34(1)(a) Section 34(1)(b) Section 34(1)(c) Section 35

Question 74

Section 34(1)(a)

Answer 74

Unauthorised Use: Use without permission. In the Course of Trade: The mark is used commercially. Identical or Similar Mark: The mark used is identical or similar to the registered trade mark. Identical Goods or Services: The use is in connection with goods or services identical to those for which the trade mark is registered. Likelihood of Confusion or Deception: The use is likely to confuse or deceive consumers.

Question 75

Section 34(1)(b)

Answer 75

Unauthorised Use: Use without permission. In the Course of Trade: The mark is used commercially. Identical or Similar Mark: The mark used is identical or similar to the registered trade mark. Similar Goods or Services: The use is in connection with goods or services similar to those for which the trade mark is registered. Likelihood of Confusion or Deception: The use is likely to confuse or deceive consumers.

Question 76

Section 34(1)(c)

Answer 76

Unauthorised Use: Use without permission. As a Trade Mark: The mark is used as a trade mark. In the Course of Trade: The mark is used commercially. Any Goods or Services: The use is in relation to any goods or services. Identical or Similar Mark: The mark used is identical or similar to a well-known registered trade mark. Absence of Deception or Confusion: Infringement can occur even without the presence of deception or confusion.

Question 77

Section 35

Answer 77

Unauthorised Use: Use of a trade mark without permission. Reproduction/Imitation/Translation: Constituting a reproduction, imitation, or translation of a foreign trade mark. Well-Known in SA: The trade mark is well-known in the Republic but not necessarily registered. Foreign Ownership: Belonging to persons who are nationals, domiciled in, or have commercial addresses in Paris Convention Countries. Business Presence in SA: Applies whether or not such persons carry on business in South Africa.

Question 78

Use of a Trade Mark in the Course of Trade

Answer 78

1. Is it being used in the ‘trade mark sense’? * The mark should be used to identify goods or services as originating from a specific enterprise. 2. Is it being used to pursue an economic advantage (profits)? * The mark must be used in a commercial context with the aim of gaining an economic benefit.

Question 79

The Test for Deception or Confusion

Answer 79

Step 1: Assess the Class of Goods and Services Step 2: Assess the Marks Step 3: Global Impression

Question 80

Step 1: Assess the Class of Goods and Services

Answer 80

Class of Goods and Services: Examine whether the goods and services are identical or similar. British Sugar PLC v James Robertson & Sons (1996): Factors to Consider: * Respective Uses: Uses of the respective goods or services. * Respective Users: Users of the respective goods or services. * Physical Nature: The physical nature of the goods or services. * Trade Channels: The trade channels through which the goods or services reach the market. * Shelf Placement: In the case of self-serve items, whether they are found on the same or different shelves in supermarkets. * Competitiveness: The extent to which the respective goods or services are competitive.

Question 81

Step 2: Assess the Marks Marks: Determine if the marks are identical or similar.

Answer 81

Plascon-Evans Paints (TVL) Ltd v Van Riebeck Paints (Pty) Ltd: Likelihood of Confusion: Consider the similarities and differences between the marks in terms of sense, sound, and appearance. Foschini Retail Group (Pty) Ltd v Coetzee: Order of Assessment: For Section 34(1)(b), assess the similarity of the marks before the class of goods or services.

Question 82

Step 3: Global Impression Global Impression: Consider the overall impression on the average consumer.

Answer 82

Mettenheimer v Zonquasdrift: Interdependence: There is a relationship between the similarity of the trade marks and the similarity of the goods. The closer the marks, the less similar the goods need to be, and vice versa. Yuppiechef Epson Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd: Average Consumer: Look at the impact on the average consumer and whether the use raises a risk of deception or confusion.

Question 83

Make a Value Judgment

Answer 83

New Media Publishing (Pty) Ltd v Eating Out Web Services: Degree of Resemblance: The less the similarity between the goods and services, the greater the degree of resemblance required between the marks to establish a likelihood of deception or confusion, and vice versa.

Question 84

Infringement in Terms of Dilution – Section 34(1)(c)

Answer 84

Focus: Protects a well-known trade mark's distinctiveness or prevents others from gaining an unfair advantage due to the trade mark's repute. Unrelated Goods/Services: Can apply even if the goods or services are unrelated. Dilution: Occurs when an objectionable mark either: Takes unfair advantage of, or Is detrimental to the distinctive character or repute of a well-known trade mark.

Question 85

The Test:

Answer 85

Assessment: Whether the use of the trade mark tarnishes or blurs the registered trade mark’s distinctiveness.

Question 86

Differences Associated with this Protection:

Answer 86

No Need for Deception or Confusion: Anti-dilution provisions do not require proving a likelihood of deception or confusion. Protection Scope: Protects a registered trade mark in relation to goods or services, irrespective of whether they are the same or similar to those for which the trade mark is registered.

Question 87

Kinds of Dilution:

Answer 87

Dilution by Blurring: Definition: Occurs when a trade mark loses its distinctiveness due to generic use or descriptive manner. Effect: Erosion of the trade mark's unique identity and selling power. Case Reference: Laugh It Off Promotions CC v SAV International. Blurring happens when the distinctive character or inherent uniqueness of the trade mark is weakened or reduced. Infringers produce products displaying a well-known mark without consent. Protection focuses on maintaining the true origin of the source of a certain product. Dilution by Tarnishment: Definition: Occurs due to unfavorable associations created between the well-known registered trade mark and the offending mark. Effect: Harm to the repute and good selling name of the mark. Case Reference: Laugh It Off Promotions CC v SAV International. Tarnishment protection focuses on safeguarding the mark’s reputation.

Question 88

Assessing Infringement of a Well-Known Registered Trade Mark

Answer 88

Step 1: Use as a Trade Mark in the Course of Trade Step 2: Test of Dilution of a Well-Known Mark

Question 89

Step 1: Use as a Trade Mark in the Course of Trade

Answer 89

Identical or Similar Mark: The mark must be identical or similar to the registered trade mark. Course of Trade: The mark must be used in a commercial context. Absence of Deception or Confusion: Infringement can still be found even if there is no deception or confusion of consumers.

Question 90

Step 2: Test of Dilution of a Well-Known Mark Assess the Mark:

Answer 90

Identical or Similar: The mark used must be identical or similar to the well-known registered trade mark. Absence of Deception or Confusion: Similarity is enough for infringement, without needing to prove deception or confusion. Assess Whether the Trade Mark is Well-Known: Definition of Well-Known: Not explicitly defined in Section 34(1)(c), but interpreted similarly to Section 35. Case References: McDonald’s v JoBurgers Drive-Inn: The mark is well-known if it has a reputation that extends to a substantial number of the public or relevant trade. Triomed (Pty) Ltd v Beecham Group Plc: Consider knowledge of the mark in the public sector, including through use or promotion, and known to a substantial number of relevant persons. Assess the Unauthorised Use by an Alleged Diluting Mark: Case References: Verimark (Pty) Ltd v BMW AG Laugh It Off Promotions v South African Breweries (CC) Dilution: The objectionable mark must take unfair advantage of or be detrimental to the distinctive character or repute of the well-known trade mark. Identify Type of Dilution: Determine if it involves blurring, erosion, or tarnishment.

Question 91

Purposes of Section 34 Infringement Actions

Answer 91

Section 34(1)(a) & (b): Focus: Concerned with the badge of origin of a trade mark. Relevance: Deception and confusion regarding the origin of the trade mark are key considerations. Section 34(1)(c): Focus: Aims to prevent free-riding on the reputation of a trade mark. Protection: Safeguards the advertising, investment, or communication functions of the trade mark, even if there is no deception or confusion.

Question 92

Defences Against Trade Mark Infringement Actions

Answer 92

Section 34(2) Section 34(2)(a) Section 34(2)(b) Section 34(2)(c) Section 34(2)(d) Section 34(2)(e) Section 34(2)(f) Section 34(2)(g)

Question 93

Section 34(2) Defences Provided:

Answer 93

Bona Fide Use of Own Name. Bona Fide Descriptive Use. Bona Fide Use to Indicate Intended Purpose. Use on Genuine Goods.

Question 94

Section 34(2)(a)

Answer 94

Bona Fide Use of Names: A registered trade mark is not infringed by the bona fide use of a person's own name, the name of their place of business, or their predecessors' names or business locations. Exclusion: Does not apply to the names of juristic persons registered after the trade mark's registration date. Fair Practice: Use must be consistent with fair practice. Case Reference: Jenni Button Honest use of one's own name without the intention to deceive or exploit another's goodwill is excused.

Question 95

Section 34(2)(b)

Answer 95

Bona Fide Descriptive Use: A registered trade mark is not infringed by bona fide descriptions or indications of kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of goods or services. Case Reference: Century City Apartments Property Services CC v Century City Property Owners’ Association Descriptive use that does not amount to trade mark use cannot be considered infringement.

Question 95

Section 34(2)(c)

Answer 95

Bona Fide Use to Indicate Intended Purpose: Use of a trade mark to indicate the intended purpose of goods, including spare parts and accessories, is not an infringement if done bona fide. Fair Practice: Use must be considered fair. Case Reference: Commercial Auto Glass (Pty) Ltd v BMW AG Use must clearly indicate no connection with the trade mark proprietor.

Question 96

Section 34(2)(d)

Answer 96

Use on Genuine Goods: ​ Importation, distribution, sale, or offering of goods to which the trade mark has been applied by or with the consent of the proprietor does not constitute infringement. ​

Question 97

Section 34(2)(e)

Answer 97

Use of Utilitarian Features: ​ Bona fide use of utilitarian features (container, shape, configuration, colour, or pattern) registered as a trade mark does not constitute infringement. ​

Question 98

Section 34(2)(f)

Answer 98

Use Within Registered Limitations: ​ Use of a trade mark in a manner or location not covered by the registration does not constitute infringement, considering any conditions or limitations entered in the register. ​

Question 99

Section 34(2)(g)

Answer 99

Concurrent Registered Trade Mark: ​ Use of an identical or confusingly similar registered trade mark is an absolute defence to an infringement claim.

Question 100

Remedies for Trade Mark Infringement

Answer 100

❖ Section 34(3) ➢ A court may grant the following: ▪ An interdict. ▪ Order for removal of infringing mark or delivery up of infringing material. ▪ Damages. ▪ Reasonable Royalty. ▪ Anton Piller Orders