1

UNIVERSITY OF CAPE TOWN

CML4504S TRADE MARKS AND UNLAWFUL COMPETITION

LECTURE GUIDE 2022

PART A TRADE MARKS

What’s this about?

A. TRADE MARK LAW IN A NUTSHELL

PRELIMINARY COMMENTS: statutory trade mark law and the common law of
passing off

Trade marks – defined in a broad sense, refers to the signs that traders use to
identify the products or services which they want to promote, as originating from a
particular source. These “signs” could include words, logos, sounds, colours, the get-
up of a shop, a smell, a jingle, the shape of a product, and combinations of these.

Statute: The Trade Marks Act of 1993 provides for a registration system so that
signs can be registered as trade marks for particular good or services – a registration
is prima face proof of proprietorship of the trade mark.

Common law: Unlawful competition is delictual route that provides a remedy where
a competitor has competed in a wrongful/unlawful way. Passing off is a form of
unlawful competition where the competitor misrepresents that its products are those
of the plaintiff’s.

CML4504S 2022 TONG

 2

1. PURPOSE AND FUNCTION

Why do you think that it is necessary for us to first think about the purpose/function?
IS it necessary?

Among the possible reasons for trade mark protection are the following.

• Identify and distinguish particular types of goods/services of from other

goods/services of the same type (“distinguishing function”)

• Provide an indication of the origin or source of the product (“badge of origin”)

• Indicator of quality or characteristics of the goods

• Advertising/promotion function

2. REGULATION OF TRADE MARKS IN SOUTH AFRICA

The Trade Marks Act 194 of 1993 and the accompanying Regulations are central to
the protection of trade marks. (The Act was amended by the Intellectual Property
Laws Amendment Act 2013 (the TK Act) but since the amendments are not yet in
force, we will not be examining them in the course.)

There are other pieces of legislation that sometimes play an overlapping role in the
protection of trade mark owners’ rights, such as the Counterfeit Goods Act and the
Consumer Protection Act. In addition, the guidelines of the Advertising Regulatory
Board,1 also come into play in some cases – the ARB administers the Code of
Advertising Practice.

At international level there is the TRIPS Agreement 1994, as well as the Paris
Convention for the Protection of Industrial Property 1883 as revised.

Our focus is only on the Trade Marks Act 1993.

1 www.arb.org.za

CML4504S 2022 TONG

 3

3. TRADE MARKS ACT 194 OF 1993 IN A NUTSHELL

Do you have your TMA?2 This is the core of statutory trade mark regulation.

In broad strokes, this is what the TMA does (at least in so far as it is of interest
to us in the course).

The TMA provides for a registration system. A trader can register a trade mark for
the goods or services in which they intend to trade.

In order to secure the registration, the substantive requirements for a valid trade
mark must be met. In other words, the trade mark must be registrable in terms of the
TMA.3 There is also, obviously, a procedure that must be followed.

Unlike patent law, there is an examination of your application to check that the mark
you want to claim as yours, meets the substantive requirements of the TMA. The
TMA also allows for a pre-registration opposition by interested persons. These are
usually competitors who do not want you to get the registration. 4

Let’s say that all goes according to plan and you get the registration. You
cannot chill. Why not? Two reasons:

Firstly, it is possible for your registration to be challenged. The TMA sets out various
grounds for this – for example, where your mark should not have been registered in
the first place because it actually didn’t meet the requirements, where your mark was
good at the time it was registered but has since lost its ability to remain registered or
where you have not used your registered trade mark enough to justify that you
should retain that exclusivity.5

Secondly, your competitors are likely not chillaxing – some may even be using marks
that infringe on your exclusive rights. The TMA sets out the scope of your monopoly
by listing the things that others cannot do in relation to your mark without infringing.6

In addition, there are many other provisions dealing with procedure,

commercialisation, and other administrative stuff.

Have a look the Tastee Cookie table below for an overview of this.

2 Trade Marks Act 194 of 1993

3 S 9 and 10 are key here. You will hear a lot more about these two sections.
4 S 21, s 9, s 10.
5 S 24, s 26, s 27.
6 S 34/s 35.

CML4504S 2022 TONG

 4
TRADE MARKS ACT 1993: IN A NUTSHELL

PRE-REGISTRATION POST-REGISTRATION

(X wants to register a trade mark (X has a registered trade mark but cannot chill.)
but has hoops to jump through and
obstacles to dodge.)

APPLICATION OPPOSITION RECTIFICATION INFRINGEMENT

X wants to Y does not want X is the proprietor of the Y uses X’s registered trade
register TASTEE X to register registered trade mark, mark TASTEE COOKIE in
COOKIE for TASTEE TASTEE COOKIE, for relation to bread and biscuits.
biscuits. COOKIE for biscuits.
X’s response = infringement
biscuits.
Y wants the trade mark action
removed/expunged from the
Y’s counter response =
Register.
defences

Issue for X: Issue for Y: Issue for Y: Apply for Issue for X: institute
Application for Oppose Rectification of the infringement action s34(1)
Registration Application for Register or Removal of X’s
(s16-20) Registration mark (s24, s26, s27)
(s21) Issue Y:
Y’s grounds are:

Y can deny infringement or

X has to make an - lack of registrability at the
raise a statutory defence.
application/follow Y to oppose X’s time of registration (entry
the procedural application for was wrongly made), or
requirements and registration on
-a subsequent development
make sure that ground of
(eg loss of distinguishing
the mark meets unregistrability
function).
the substantive ito s9, s10.
requirements of - non-use (no intention to use
s 9 and s 10. at the time of registration or
subsequently).

CML4504S 2022 TONG

 5

B. WHAT IS A TRADE MARK AND HOW DO YOU GET ONE?

INTRODUCTION

Note: Trade marks, like patents, are territorial, so your registration in SA only
extends to SA. In addition, it lasts for 10 years, but it is renewable.7 The scope of
your rights is found in the list of things which others cannot do without infringing.

This week, we will focus on two things:

1. FIRST THING: WHAT IS A TRADE MARK?

2. SECOND THING: HOW DO YOU GET ONE?

1. FIRST THING: WHAT IS A TRADE MARK?

1.1 WHAT IS A TRADE MARK? DEFINITIONS…

Many different types of things can act as trade marks, however, not everything will
be recognised by the TMA. There are four types of trade marks in the TMA.

• Registered trade marks (s9)

• Well-known foreign trade marks even if they are unregistered (s35)
• Collective trade marks (s43)
• Certification trade marks (s42)
• (Traditional terms and expressions – Intellectual Property Laws Amendment Act
2013)

Note: Our focus is on the first two categories.

(And we will not explore Traditional terms and expressions as introduced by the
Intellectual Property Laws Amendment Act 2013 because they are not in force.)

7 Unlike patents and copyright where you cannot renew your rights once the time has run out.

CML4504S 2022 TONG

 6

1. 2. HOW THE TMA DEFINES A TRADE MARK

TMA s9, s2 definitions

Only trade marks can be registered under the TMA.

A trade mark is defined in s 2(1). Note that it specifically excludes certification and
collective trade marks.

A trade mark, as defined, is

‘ a mark used or proposed to be used by a person in relation to goods or services

for the purpose of distinguishing the goods or services in relation to which the mark
is used or proposed to be used from the same kind of goods or services connected
in the course of trade with any other person’.8

Four elements of the definition (a-d):

a. “mark”

A “trade mark’ = a “mark”. What is a mark? (definition s 2(1))

A “mark” = “any sign”. What is a sign? (definition?)

Examples of each?

b. capable of being represented graphically

It must be possible to represent the mark in a way that can be recorded or

reproduced.9 This means that when others look at how the mark is
represented/described in the trade mark register, they must be able to determine
fully what is there. It is also against this graphic representation that one compares
the marks for infringement.

How would one graphically represent marks which are not “traditional” eg sounds or
even smells?! See: Guidelines on the Lodging of Non-traditional Trade Marks
(CIPRO 2009) (Vula).

Note that wrt olfactory/smell marks, the reference is to the ECJ in Sieckmann v
Deutches Patent-und Markenamt [2003] RPC 38 685 (ECJ ) where it was held that
with regard to olfactory marks that a trademark could consist of a sign that was not
visually perceived, provided that it can be represented graphically and that the
representation is clear, precise, self-contained, easily accessible, intelligible, durable
and objective. This is not satisfied by chemical formulae, by description in words,
deposit of odour sample, or combination of these.10

Task: what was the mark in question in this case?

8
(Don’t just believe everything I tell you, make sure you check the TMA s 2(1)!)
9 The Regulations require this element reg 13.
10 You don’t have to read the case but do keep in mind the need to reference the Guidelines if you

want to meet this requirement.

CML4504S 2022 TONG

 7

c. Use or proposed to be used in relation to goods or services

For the mark to be a trade mark is must either be currently used in relation to goods
or services in the course of trade or you must intend to use it for that purpose. The
trade mark need not have been used prior to the application for registration.
What is the implication of this?

How does one actually “use” a mark?

Section 2(2) – (4) provides the following as indicators that the mark is in use:

-the use of a visual representation of the mark

-the use of an audible reproduction of a mark which can be reproduced audibly
-for a container mark the use of the container.
- in the case of goods, the use must be upon or in physical or other relation to the
goods.
- in the case of services the use must be in relation to the performance of such
services.

Example: If you wanted to use a smell/odour as a trade mark, how would you “use”
it? How would you use your trade mark if your product is gas?

d. for the purpose of distinguishing the goods or services

We identified various possible functions. However, in the TMA, the distinguishing

function is specifically included in the definition of “trade mark”.

The use or intended use of the mark, must be use as a trade mark, in other words,
for the purposes of distinguishing. This excludes mere decoration or ornamentation.

For example:

the goods = chocolate

the marks = “Cadbury” vs “Nestle” vs “Lindt”

– the word marks serve to distinguish the chocolate of each trade mark owner from
the chocolate of other trade mark owners.

CML4504S 2022 TONG

 8

1.3. COLLECTIVE MARKS AND CERTIFICATION MARKS

TMA s42, s43

A certification mark is a mark capable of distinguishing, in the course of trade, goods

or services certified by any person in respect of kind, quality, quantity, intended
purpose, value, geographical origin or other characteristics of the goods or services, or
the mode or time of production of the goods or of rendering of services, as the case
may be, from goods or services not so certified. Section 42(1).

In short,
• a certification mark indicates that the holder of the certification mark registration
(its proprietor) certifies/warrants that the goods or services which bear the
mark, are of a certain standard or quality
• the rules which accompany the registration set out the circumstances in which
the proprietor of the registration will authorise use of the certification mark.
Examples: “Scotch Whisky”, the "Woolmark" and the "SABS mark"
• note that if you are the proprietor of the certification mark, you cannot also be
trading in the goods for which the certification mark is held (Can you give a
reason why this is so?)

A collective mark is a mark capable of distinguishing, in the course of trade, goods or

services of persons who are members of any association from goods or services of
persons who are not members thereof. S43(1)

In short,
• we are dealing with the registration of a mark which one group/collective or
traders of certain goods and services use to distinguish themselves other
providers of those types of goods and services. Pause of a moment here – can
you see how this differs from certification marks? (Here we are distinguishing
persons, certification marks distinguish products by standard)
• geographical names and other indications of geographical origin may be
registered as collective marks
• although there are rules which govern the use of the collective mark, the focus
here is on who may use it (eg wine producers in a particular area, sheep
farmers in the Karoo), as opposed to the standard of the product that they
produce.

CML4504S 2022 TONG

 9

2. SECOND THING: TRADE MARK REGISTRATION

2.1. CHITCHAT
Having a trade mark registration is prima face proof that you are entitled to use the
mark in terms of the exclusivity provided by the TMA. The scope of your rights/what
you can stop other people from doing, is set out in s 34 which makes provision for
what sort of behaviour is regarded as an infringement.

The register must accurately reflect what sign it is that you, as trade mark proprietor,
is entitled to keep for yourself, and by implication – what it is that competitors are not
allowed to use when they trade. If the registration is too broad or vague, others are
at an increased risk of infringing because the boundaries of your exclusive rights are
not clear.

2.2. THE REGISTAR AND THE REGISTER

ss5-8, s44-s48A
The TMA provides for a Registrar of Trade Marks who controls the trade marks
office. The registrar’s powers and duties relate to the prosecution of applications,
registration of trade marks, amendments to the register, and renewal or registrations,
and all sorts of other admin things.
There is a register11of trade marks kept at the trade marks office.

2.3. REGISTRATION PROCEDURE

Ss16-21 There is an application procedure (which we do not do in any detail here)
that must be followed when you want to register a trade mark.12

In short, it looks something like this:

• Submit application. TM office allocates a number and filing date to the application.
• Registrar examines to determine if any of the grounds for refusal apply. In effect
the registrar has to check whether the proposed mark complies with s9 and is not
excluded by s10.13
• Registrar may either accept it absolutely, refuse it, provisionally refuse it or
accept subject to modification, amendment and limitations.
• If there are any objections, these are sent to the applicant who is given three
months to respond; no response within the period will result in the application
deemed to have been abandoned. If correspondence/hearing between the applicant
and Registrar is unsuccessful, the applicant may appeal to the HC.
• If accepted by Registrar but subject to conditions, modifications and/or limitations
and the Applicant objects then the applicant has three months again to submit
arguments in writing, apply for hearing or extension.

11 Under the 1963 Act the register was divided into Part A and Part B. Part A was for distinctive
marks, and Part B for marks which were capable of becoming distinctive through use. There is no
longer this division and the marks existing under the 1963 which were incorporated into the current
Act at its commencement fall into the single Register.
12 And regulation 11 of the 1995 regulations.
13 We will be spending a lot of time on s 9 and 10!

CML4504S 2022 TONG

 10

• After the Registrar has accepted the application, the applicant has to
advertise/publish it in the Patent Journal. The application is left open to opposition
by interested parties for period of 3 months from date of advertisement.
• Opposition14
• If no opposition, then registration is granted for a period of 10 years after filing of the
application.

You don’t need to “study” this for the course but bear in mind that there is an
examination process and an opposition opportunity. This means that your application
has to pass the registrar’s eye and not be knocked out by a third party, in order to
succeed.

2.4. WHAT YOU MUST KNOW ABOUT REGISTRATION!

Representation of the mark in the application

The Regulations (reg 13) set out how the mark is to be represented in the
application. The aim is for the mark to be represented with sufficient certainty to
enable the public to know the full extent of the monopoly claimed by the applicant. 15

The goods/services must be classified into a Class.

See s11(1). We’ve said that you can register your mark for the goods or services in
which you trade. When you apply for the registration, you have to select one or more
classes of goods/services.
If an application for the registration is made in more than one class, then a separate
application with its own specification for each class is needed. The classes are quite
broad and if you will not be using the mark in relation to every item in the class, you
would generally indicate the specific goods for which the registration is required.

How do you know which class?

The Regulations provide for 45 classes of goods and services for which trade
marks may be registered. Of these the first 34 are for goods and the last 9 are for
services.16
The classification is based on the Nice Agreement of 1957 as revised (International
Classification of goods and services for the purposes of the registration of trade
marks). it is amended periodically.

Example: If I want to use the mark Pumpkin Pie for clothing for people, then I would
register it in Class 25. This would not stop someone else from using the mark
Pumpkin Pie to trade in carpets. Carpets do not fall under the goods for which I have
registered the trade mark, ie clothing in Class 25. Carpets are not clothes (usually
) and they fall under Class 27.17

14 The procedure is set out in reg 52(1) and reg 19. Section 21 provides that any interested person
may oppose the application. The grounds on which a registration may be opposed are any one or
more of the grounds on which a registration may be refused, namely s9 and s10.
15 How does that requirement of graphical representation fit in here, do you think?
16 Schedule 3 of the Regulations provides for 45 classes of goods and services for which trade marks

may be registered
17
A copy of the Nice Classification list of classes is on Vula (Resources/Legislation).

CML4504S 2022 TONG

 11

There may be conditions or limitations attached to the registration.

The Registrar may impose certain conditions and limitations or requirements before
accepting the application for registration (s17).

These include:

(a) Consent if you want to register the name or representation of a person

See s 12.

(b) Associations

See s 30 provides that where a proprietor registers/applies to register a mark that is

so similar to his own trademark/application that the marks would be likely to deceive
or cause confusion if they were used by different traders (can be different classes)
then the Registrar may require that the marks be associated.

This means that they cannot be transferred/assigned separately. For all other
purposes the marks are separate.
The association of a trademark with another trademark is also deemed to be
associated with all other trademark associated with the latter mark.

In short, a trade mark registration is an asset and the proprietor can sell it on to
another person. A person could hold multiple trade marks -each one is a separate
asset. However, some may be very similar to each other. If the trade mark owner
has three similar trade marks and assigns one of them to someone else, it means
that there are now two different traders with similar trade marks. A consumer may
buy a product from the assignee thinking that it is actually from the original
proprietor/assignor.

We want to avoid this – so where you have multiple similar marks, you may be
forced to associate them. That way, you cannot assign one/some and create
confusion in the marketplace.

Are there any benefits to association of marks? (Keep this question in mind when we
do s 27)

CML4504S 2022 TONG

 12

(c) Registration subject to Disclaimers18

A trade mark may be made up of a number of elements, some of which on their own,
may not be capable of distinguishing. However, when used in combination, it may
form a whole which is capable of distinguishing.
A disclaimer indicates that the registration does not cover a certain element of the
whole trade mark. It may relate to part or all of the matter and it will show in the
register that the proprietor has no rights in the exclusive use of the disclaimed
matter.

Read Cadbury v Beacon 2000 SCA.19

What is the effect of a disclaimer?

• If another person uses the disclaimed element in connection with

goods or services for which the trademark is registered, then it will not
constitute infringement.

• In order to assess capability of a mark to distinguish, the disclaimed

elements form part of the enquiry. A composite mark may be made up
of a number of disclaimed non-distinctive elements but which together
are capable of distinguishing. Once a feature is disclaimed it does not
necessarily mean that it is non-distinctive for future applications.

(d) Limitations

The registration may be limited. A limitation may relate to–

• the mode of use
• territorial restrictions within SA – the mark may/may not be used in certain
places.
• restrictions as to use for export (s34(2)(f)).
• Colour limitation - A mark is usually registered with no colour limitation
and is thus deemed to be registered for all colours (s32).20

18 In South Africa we also have “admissions” which are in effect a type of disclaimer. They are usually
used where descriptive words are used or there are misspellings/phonetic equivalents/abbreviations.
They state that the registration does not stop others making bona fide use of the matter to describe
their goods/services.
19 Other examples (not prescribed) are Judy’s Pride Fashions (Pty) Ltd; Estee Lauder.
20 See Smithkline Beecham Consumer Brands (Pty) Ltd v Unilever plc 1995 2 (SA) 903 (A) – not

prescribed.

CML4504S 2022 TONG

 13

2.5. EFECTS OF REGISTRATION

As the proprietor of a registered trade mark, you are able:

- to use the trade mark in relation to the goods or services in respect of which the trade
mark is registered
- to prevent other persons from registering the trade mark or a confusingly similar mark
in relation to the same or similar goods or services (s10(14))
- to prevent other persons from infringing the trade mark (s34)
- to license the use of the trade mark (s38)
- to transfer (assign) the trade mark (s39)
- to hypothecate the trade mark by a deed of security (s41).

Duration:

A trade mark registration lasts for 10 years from the date of lodgement of the
application at the TMO (s29).

It may then be renewed for 10 year periods on application by the proprietor (s37).
There is no limit to the number of times that a trade mark can be renewed – as long
as the requirements are met, it will endure!

CML4504S 2022 TONG

 14

C. REGISTRABILITY OF A TRADE MARK

Remember TASTEE COOKIE? Keep it in the back of your mind for this section and
let me know whether it would be registrable.

Reminder:
In order for a trader to register a trade mark, the mark must meet the requirements in
s 9 and (not be excluded by) s 10. The registrar will look at these grounds and
possibly reject the application because it falls foul. Similarly, at this application stage,
a third party could oppose the registration – again based on s 9 and 10.

If the mark is registered, s 9 and s 10 may nonetheless pop up again – this time
when there is an application to make a change to the trade marks register (where
the mark is reflected).

The change could be on the basis that, again, that the mark did not meet s 9 and 10
when it was registered or that it was okay when it was registered, but subsequently
no longer meets s 9 and s 10! Sometimes the change that is being applied for is to
remove the mark completely (expunge it from the register) and, other times, it is less
severe, for example leaving the registration but wanting a disclaimer to be added.

NOTE ON CASES: The prescribed case list is on Vula and linked to this Lecture
Guide. The cases referenced in here with * are prescribed; and ** are
recommended/additional reading.

CML4504S 2022 TONG

 15

SECTION 9 WHAT CAN YOU REGISTER?

Section 9 sets out when a trade mark is registrable.

In sum, it provides that at the time of application for registration, the trade mark must
be capable of distinguishing the goods or services in respect of which it is registered
from the goods or services of another person.

This applies generally or where there are limitations imposed upon the registration,
in relation to use within the limitations.

Element 1 - do you have a trade mark?

Element 2 - is the trade mark able to perform the distinguishing function?

Element 1 Do you have a trade mark?

How do you determine whether the thing you want to register is a trade mark?

Element 2 Is the trade mark able to perform the distinguishing function?

How do we go about making the call on whether the trade mark is capable of
distinguishing within the meaning of the TMA.

Section 9(2) - a mark may be

- inherently capable of distinguishing or
- it may acquire such capability to distinguish through prior use of the mark.

*Beecham v Triomed 2002 SCA [20]: first ask whether the mark is inherently capable
of distinguishing the goods and services of one proprietor from those of another; if
not, then ask whether the mark is capable of distinguishing by reason of its use (to
that date at which we must test the mark).

Example: inherently capable versus prior use

??

CML4504S 2022 TONG

 16

Think about what we require of the mark. Simplistically, the trade mark must serve to
enable consumers to make a choice about whether to buy item X (eg a cola soft
drink) from trade A or from trader B. The registered trade mark must enable the
consumer to distinguish between the various sources of the product.

When would a mark be less effective at doing this/not inherently capable of

distinguishing?

-usually when it is descriptive of the products being sold – for example, the word
COLA is not a good choice for a trade mark in the cola example above. Neither is
“SOFT DRINK”. Both could be used by all the traders to describe their product. In
short – such a descriptive word is not inherently capable of distinguishing.

So, what happens when you want to register a mark that is not inherently capable eg
ROCOLA or RolaCola or COLA SOFT etc? Are you excluded from registration
under s 9? Not outright –you still have PRIOR USE as the basis for showing that the
mark is capable of performing the distinguishing function which we need from a trade
mark.

You will come across various terms: acquired distinctiveness, secondary meaning,
acquired through use, etc. It simply means that if you can show at the time of your
application for registration that the mark you have been using to date, has, through
your use of it as a trade mark, actually become capable of distinguishing your goods
(eg cola) from those goods (also cola) of other traders, then it is registrable.
You would have ACQUIRED DISTINCTIVESS through PRIOR USE of the mark.

On prior use, a few points to note:

• the use must have taken place prior to the application for registration. (“prior
use” – geddit?). Evidence of use subsequent to the date of the application for
registration will not help you – it is inadmissible.
• the mere fact that you had used the mark is not sufficient to prove that the
mark has acquired distinctiveness.

Read
*Cadbury v Beacon (SCA) – what is the question to be decided?
*Die Bergkelder Bpk v Vredendal Koöp Wynmakery and Others What does it say
about when a mark is inherently capable of distinguishing?

Let’s look at a few types of marks and their possible effect on whether the mark
is capable of distinguishing. Note that we are simply focusing on s 9 now.

CML4504S 2022 TONG

 17

Laudatory epithets21
These are words etc that extol the virtues of the product. They are usually not
inherently capable of distinguishing. You would need to prove acquired
distinctiveness.
eg. best, fantastic, great, special…

Invented words
The mere fact that a word is invented does not of itself mean that the trade mark is
inherently distinctive - it remains a factual test. However, it does seem arguable that
invented words are more readily also inherently capable of distinguishing.22

Descriptive words
As discussed above, descriptive words are usually not inherently capable of
distinguishing – you need to do some work to acquire distinctiveness.

GOOGLE
“MEGABURGER”

**Pleasure Foods (Pty) Ltd v TMI Foods cc t/a Mega Burger and another 2000 (4)
SA 181 (T)
** Quad Africa Energy (Pty) Ltd v The Sugarless Company (Pty) Ltd and Another
(Case no 1176/2018) [2020] ZASCA 37 (9 April 2020)

Geographical terms
Using a geographical term (eg a place name) to actually refer to the geographical
origin of the goods/product is likely to not be distinctive.
Section 43(2) of the 1993 Act provides for the registration of “Geographical names and
other indications of geographical origin” as collective Trade Marks.

Colour
Can a single colour be distinctive? What are the challenges here? When do you
think it can or cannot?

Slogans
These are probably not normally be inherently distinctive and require proof of capacity
to distinguish through use as a trade mark prior to the application for registration.

21 For additional cases on this see Estee Lauder (“Beautiful”); Pleasure Food (Pty) Ltd; Distillers
Corporation (SA) Ltd v Stellenbosch Farmers Winery; First National Bank of South Africa v Barclays
Bank. Not prescribed but simply if you want more examples.
22 Not prescribed – just for illustration – “Maizena” Corn Products Refining Co v African Products

Manufacturing Co 1922 WLD 163; Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd

CML4504S 2022 TONG

 18

In Heublin Inc v Golden Fried Chicken (Pty) Ltd (1982 4 SA 84 (T)

confirmed on appeal 1984 3 SA 911 (T)):

‘In considering the extent of the mark’s inherent adaptability to

distinguish. I am unable to agree with the submission made
on behalf of the respondent that the mark consists of nothing more
than four ordinary English words used in an ordinary English phrase. The adverbial
phrase ‘Finger Lickin’ which qualifies the adjective ‘good’ is, in my view, an invented
and to some extent ingenious term, which is used in conjunction with the word ‘good’
to form a novel adjectival slogan describing the quality of the applicant’s products . . .
That it has descriptive and laudatory attributes cannot be denied, but it is not a phrase
in ordinary use in the English language . . . It is an invented slogan, describing the
relish with which the product can be enjoyed in terms which constitute a novel and
original combination of words.’

[See Heublin Inc v Golden Fried Chicken (Pty) Ltd 1982 4 SA 84 (T) – not
prescribed, just for fun]

Containers
A container can be registered as a trade mark for the goods/contents. In this case the
container mark is not a trade mark in respect of the container itself.
Containers may struggle if their characteristics are purely functional – but in some
cases, it may be quite easy, for example where the design of the container is crafted
specifically for that product. Example?
Read Die Bergkelder Bpk v Vredendal Koöp Wynmakery and Others [paras 7-11] –
this case deals with the challenges of container marks.

Note that if an applicant trades in containers and wants to register the shape of those
containers, the application is in fact for a shape mark! In other words, if your product
is glass bottles and you want to register the shape of those bottles as your trade mark,
then you would not be registering a container mark, but a shape mark. See the next
section!

Shapes
Shape marks may also pose a challenge. See Beecham v Triomed (on s 9).
What about the shape of a Kit-Kat? Is this capable of distinguishing?

Good to know but not prescribed: ** Prior to the current Act, one could not
register a shape as a trade mark. You could register a container though. Have a
look at AW Faber-Castell (SA) (Pty) Ltd v Schwan-Stabilo Schwanhauser GmbH &
Co 1981 – how did they try to get around this?

CML4504S 2022 TONG

 19

SECTION 10 WHAT IS NOT REGISTRABLE UNDER THE TMA?

Section 20 can be classified into exclusions of the following type:

➢ Marks which are excluded on absolute grounds (in other words, any
application would be excluded on this ground – for example, a mark which is
inherently incapable of distinguishing)23
➢ Marks which are excluded on relative grounds (in order words, marks which
are excluded only when you compare them to other marks)24
➢ Marks which are unregistrable because of the conduct of the applicant (in
other words, it’s not the mark’s fault but the person’s!)25

What follows below is a chronological exploration of s 10 – bear in mind the

categories above as a way to understand the exclusions.

S10(1) A MARK WHICH DOES NOT CONSTITUTE A TRADE MARK

If the mark does not meet the definition of “trade mark” and all the associated sub-
definitions, then it is not registrable.
The aim is to preclude the registration of marks not used for trade mark purposes
and which do not perform the function of a trade mark. (See Beecham vTriomed
SCA).

Example: if you wanted to register a smell mark but are not able to meet the
requirement of “graphic representation” or “use”, then you would fall foul of s 10(1).26

S10(2) THREE GROUNDS FOR EXCLUSION FROM REGISTRABILITY

Section 10(2) has three categories of marks which cannot be registered.

These provisions must be read with the PROVISO in s 10.

- a trade mark shall not be refused registration or removed from the register by virtue
of s10(2) if at the date of the application for registration or removal, it has in fact
become capable of distinguishing through use. This means that if the mark has
acquired a secondary meaning as a result of prior use, it will avoid the exclusion and
will be registrable.

2310(1), (2), (5), (8), (9), (10), (11), (12)

2410(3), (6), (13), (14), (15)
25 10(4), (7), (16), (17)
26 As an aside – in Beecham v Triomed – the court a quo found that the description and use of word

“substantially” was not sufficient to meet the graphic description requirement. The SCA held that it
was sufficient although the mark fell down on the distinctiveness aspect - the insufficiency and
ambiguity rendered the mark non-distinctive.

CML4504S 2022 TONG

 20

(a) S 10(2)(a) A mark which is not capable of distinguishing within the meaning of
s9

Section 10(1) – discussed above- provides that things which do not meet the
definition of a trade mark, are excluded.
Here we are looking at whether the mark is actually capable of distinguishing.

(b) S10(2)(b) A mark which consists exclusively of a sign or an indication

which may serve in trade to designate the kind, quality, quantity, intended
purpose, value, geographical origin or other characteristics of the goods or
services, or the mode or time of production of the goods or of rendering of the
services

This one can easily be confused with s 9 and s 10(2)(a) – in many instances, the
types of marks mentioned here lack inherent distinctiveness. HOWEVER, do not
merge the provisions. The aim here is to preserve the rights of other traders.
(See Discovery Holdings v Sanlam 2015 (1) SA 365 (WCC) [84]: “ Section
10(2)(b)…is not concerned with distinctiveness, but served a public interest and
seeks to preserve the rights of other traders”.)

The mark is unregistrable if it consists exclusively of the unregistrable sign. A mark

that is a combination of such and other marks can still be registrable, although it may
be subject to a disclaimer of the unregistrable part.

Marks which serve the purpose to designate characteristics of the goods or of the
mode or time of production etc are excluded. Note that the list of characteristics is
not closed – “other characteristics” leaves it open.

Kind- refers to generic descriptions eg when then is no alternative word to describe

the product (see Cadbury v Beacon; Triomed v Beecham )
Quality - marks which are laudatory epithets, direct descriptions of the quality of the
services or goods. (Pleasure Foods)
Quantity - ?
Intended purpose- generic expression of the use to which the goods/services relate
eg Spray & Cook?
Value - ?
Geographical origin (See *Century City Apartments v Century City Property Owners
(57/09) [2009] ZASCA 157 (27 NOVEMBER 2009)
Other characteristics - exclusively of a sign relating to characteristics

Method or time of production - ?

See (and on disclaimers): Cochrane Steel Products (Pty) Ltd v M-Systems Group
(1272/2016) [2017] ZASCA 189 (13 December 2017)
**PepsiCo v Atlantic Industries (983/16) [2017] ZASCA 109 (15 September 2017)

CML4504S 2022 TONG

 21

s10(2)(c) Marks which consist exclusively of a sign or an indication which has

become customary in the current language or in the bona fide and established
practices of the trade

For the same reasons as above, a sign that has become customary in the current
language or in the bona fide and established practices of the trade will not be
registrable.
These are sometimes referred to as generic terms. This provision applies to all signs
– including shape, colour, configuration, pattern etc.

This section must be read with the section 10 proviso that a mark shall not be
refused registration or removed from the register by virtue of s10(2) if at the date of
the application for registration or removal, it has in fact become capable of
distinguishing through use. This means that the mark must have acquired a
secondary meaning as a result of use.

S10(3) A MARK IN WHICH THE APPLICANT DOES NOT HAVE A BONA FIDE
CLAIM TO PROPRIETORSHIP

A person who has bona fide appropriated the mark first for use in relation to
goods/services as a trade mark can claim proprietorship. Factors that may be
considered in determining a bf claim to proprietorship include honesty, breach of
confidence, and sharp practice. It would not be bona fide to register a mark knowing
that someone else has a better title to it – ie to simply block the other person.

Bear in mind that since trade marks are territorial, the fact that X has or uses a trade
mark outside of SA, does not preclude a trader in SA from claiming the mark. The
only exception is the case of well-known foreign marks under s 35 of the TMA – we
will look at those a bit later in the course.

S10(4) NO BONA FIDE INTENTION BY THE APPLICANT TO USE THE MARK

AS A TRADE MARK EITHER BY HIMSELF OR THROUGH A PERMITTED USER.

We know that one can apply to register a trade mark even if you have not yet used
the mark. However, you must at least intend to use the mark as a trade mark.
And that intention must be bona fide – in other words, you must intend to use it in
relation to the goods which are being registered, as a trade mark. Simply using it as
ornamentation is not enough.27

27See South African Football Association v Stanton Woodrush 2002 (2) SA 236 (T)– not prescribed
but skim it to fully understand how this provision works.

CML4504S 2022 TONG

 22

S10(5) A MARK WHICH CONSISTS EXCLUSIVELY OF THE SHAPE,

CONFIGURATION, COLOUR, 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.

Break down the provision:

1. Are we dealing with a mark which is EXCLUSIVELY the shape, configuration,

colour, pattern of the goods which are being traded? In other words, the shape,
configuration etc is actually descriptive of the goods. There is nothing in addition (eg
a capricious additional thing) which takes it out of the EXCLUSIVELY range.

2. If the answer to 1 is YES, then we have to enquire:

- is such shape, configuration, colour or pattern necessary to obtain a specific
technical result? OR
- does such shape, configuration, colour or pattern necessary result from the nature
of the goods themselves?

3. If the answer to either in 2 is YES, then the mark cannot be registered.

NOTE:
• It is possible to register where the mark does not consist exclusively of the
shape, configuration, colour or pattern, etc. Such marks would not be
captured by s 10(5).
• The s10 proviso which applied to s10(2)(a),(b) and (b) does not apply to
10(5). This means that it is not possible for you to overcome an exclusion
here based on prior use.

Issue: What does ‘necessary to achieve a technical result mean?

Philips Electronics NV v Remington Consumer Products Ltd (English CA) per Aldous
LJ:
“The subsection must be construed so that its ambit coincides with its purpose. That
purpose is to exclude from registration shapes which are merely functional in the
sense that they are motivated by and are the result of technical considerations. Those
are the types of shapes which come from manufacture of patentable inventions. It is
those types of shapes which should not be monopolised for an unlimited period by
reason of trade mark registration, thereby stifling competition...In my judgement the
restrictions upon registration imposed by the words “which is necessary to obtain a
technical result” is not overcome by establishing that there are other shapes which can
obtain the same technical result. All that has to be shown is that the essential features
of the shape are attributable only to the technical result. It is in that sense that the
shape is necessary to obtain the technical result. To adopt the meaning suggested by
Philips will enable a trader or traders to obtain registration of all the alternative shapes
that were practicable to achieve the desired technical result...”

[SA Beecham v Triomed followed above reasoning]

Read: Société des Produits Nestlé SA v International Foodstuffs 100/14) [2014]
ZASCA 187 (27 November 2014) at par [25] for the discussion of s 10(5) for now.

CML4504S 2022 TONG

 23

S10(6) WELL KNOWN MARKS UNDER PARIS CONVENTION/S35 TMA

In short, you cannot register marks which are protected under s 35. The provision in
s 10(6) mirrors what is in s 35.

S10(7) WHERE THE APPLICATION WAS MADE MALE FIDE

A male fide application could be where the applicant had an improper motive for
applying – for example, to limit other traders in the industry or to block someone from
entering the market.

S10(8) MARKS CONSISTING OF NATIONAL FLAGS, ARMORIAL BEARINGS,

OFFICIAL SIGNS, HALLMARKS ETC

South Africa is obliged under Art 6ter of the Paris Convention for the Protection of
Industrial Property, 1883, to protect armorial bearing, national flags and the like of
the Convention countries. Generally, if you want to register one of these as a trade
mark, you would need to prove to the registrar that you have the consent of the
competent authority of the Convention country in question.

S10(9) A MARK WHICH CONTAINS ANY WORD, LETTER OR DEVICE

INDICATING STATE PATRONAGE

It seems that we want to stop you pretending that you have some sort of State power
which you can wield.

S10(10) A MARK WHICH IS CONSIDERED A PROHIBITED MARK IN THE

REGULATIONS

There are Regulations published that are to be read with the Act. If the Regs say
“NO”, then it is “NO”.28 Of interest though, is the regulation which allows the
Registrar to refuse to register a mark which has things like “patented”, “registered”,
“registered trade mark”, ©, ®, “copyright”, and such things which indicate some form
of registration.29

28
This means that in real life you need to go check the Regs. Just know that you need to know them if
you practice eventually.
29 Ref 10(1).

CML4504S 2022 TONG

 24

S10(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.

At first glance this provision looks similar to s 10(5). BUT IT IS NOT!

Here we are dealing with container marks and with marks which consist of the
shape, configuration, colour or pattern of the goods themselves. (S 10(5) does not
deal with containers).
Once you have established exactly what it that the applicant wants to register, you
need to ask whether allowing the registration would have the effect of limiting the
development of any art or industry.

Note the Triomed case.

S10(12) A MARK WHICH IS INHERENTLY DECEPTIVE MARK OR THE USE OF

WHICH WOULD BE LIKELY TO DECEIVE OR CAUSE CONFUSION, BE
CONTRARY TO LAW, BE CONTRA BONOS MORES, OR BE LIKELY TO GIVE
OFFENCE TO ANY CLASS OF PERSONS

The main purpose seems to be to protect the public. There are FOUR categories of
trade marks which are excluded from registration under s 10(12).

Inherently deceptive or the use of which would be likely to deceive or cause

confusion

The concern here is whether the public/consumer will be deceived or confused.

This provision may be used in various circumstances.

(i) The most common is its use by competitors who do not have a registered trade
mark but who have been using a trade mark which would be compromised if the
applicant is successful.30 Such an action may arise out of a resemblance to an
unregistered mark, or even a sign that is not actually a trade mark per se.
However, in order for a trade mark to be rejected on this basis, the mark/get-up
against which it is being compared by be shown to have acquired a reputation in the
marketplace. This reputation is akin to that which is required under the common law
action for passing off (which we will do next term!). In addition, the comparison to
determine whether the two marks are similar enough to cause such
deception/confusion, follows the same principles as for s 10(14) and the infringement
provisions.

(ii) Deceptiveness in this context could also arise where the proposed mark would be
misleading as to the origin of the goods, for example, the inclusion of a device such

30 Note that unlike s10(14) the likelihood of deception or confusion is not in relation to a registered
trade mark specifically, nor is it limited to certain goods and services.

CML4504S 2022 TONG

 25

as a maple leaf may deceive people into thinking that your sugar syrup is maple
syrup from Canada.31

Similarly, a proposed trade mark could be deceptive as to the character or quality of

the goods. Can you think of examples here?

Read: Roodezandt Ko-operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd &
another (503/13) [2014] ZASCA 173 (19 November 2014). (also for s 10(14))
Groot Constantia Trust v DGB (Pty) Ltd Case 52287/2013 Gauteng HC 2015

Use contrary to law

This is straightforward – if the trade mark contravenes South African law, it will not
be registrable. What about these marks? Would they be registrable?

• These two pictures for clothing:

• The word MARIJUANA for biscuits

Use contra bonos mores

Here reference would probably be to the common law unlawful competition

cases.32Probably determine with reference to common law unlawful competition
cases

Likely to give offence to any class of persons

Issue: What should the SA approach be in deciding whether the mark is likely to
offend? Should there be limitations read into the section? Would the “reasonable
person” come in here?
We do not have case law on this in South Africa but the sentiment is that this is not
only applicable to majority groups.33

31 eg Mc Glennon’s Application 1908 RPC 797 – mark comprising of a shamrock held to be deceptive
in that it suggested the goods manufactured in Ireland when they were made in England.
32 See for example Schultz v Butt 1986 (A)
33 According to HALLELUJAH Trade Mark 1976 RPC 605 a trade mark may nevertheless be refused

registration in the exercise of the Registrar’s discretion “if registration would be reasonably likely to
offend persons who might be in a minority in the community yet be substantial in number”. In BASIC
TRADEMARK SA’s Trade Mark application 2005 RPC 25 (AP) 611, application was made to register
JESUS as a trade mark in various classes. In refusing registration, it was stated that: “The power of

CML4504S 2022 TONG

 26

S10(13) A MARK WHICH, AS A RESULT OF THE MANNER IN WHICH IT HAS

BEEN USED, WOULD BE LIKELY TO CAUSE DECEPTION OR CONFUSION

Section 10(13) relates to marks which because of the manner in which they have
been used pre-registration, would post-registration cause deception or confusion.
Usually it is because the expectation of the public would not be met. An example
would be “bare licensing” which would lead to the mark losing its capacity to be a
marker of quality or character.34

S10(14) MARK WHICH IS IDENTICAL TO A REGISTERED TRADE MARK OF

ANOTHER PERSON OR SO SIMILAR THERETO THAT USE IN RELATION TO
THE GOODS OR SERVICES IN WHICH REGISTRATION IS SOUGHT AND
WHICH ARE THE SAME OR SIMILAR TO THE GOODS OR SERVICES IN
RESPECT OF WHICH THE TRADEMARK IS REGISTERED, WOULD BE LIKELY
TO DECEIVE OR CAUSE CONFUSION.

The conflict here is with a registered mark (unlike s10(12) which may refer to an
unregistered mark). In other words, X wants to register a trade mark but there is
already a similar trade mark on the register for the same/similar goods and the effect
of this would be that consumers will be confused/deceived.
Note the following exceptions to this, namely:
- where the proprietor of the registered trade mark consents to the registration of the
later mark, or
- where there is honest concurrent use or other special circumstances in terms of s14
of the TMA.

See Adcock Ingram Intellectual Property (Pty) Ltd v Cipla Medpro (Pty) Ltd [2012]
ZASCA 39 (29 March 2012)
Dinnermates (Tvl) CC and Piquante Brands International & another 401/17) [2018]
ZASCA 43 (28 March 2018)

S10(15) TRADE MARK APPLICATIONS INCONFLICT WITH EARLIER/PENDING

APPLICATIONS

This section is similar to s10(14) except that it extends the ground for refusal to an
application for registration (whereas s 10(14) says that a registration already exists,
this one says an application already exists).
Thus a prior application will be in the same position as a prior registration.

a trade mark to produce a reaction inevitably varies according to the nature and intensity of the
perceptions and recollections triggered by the relevant mark.”
34 See Moolla Group Limited and Others v The Gap Inc and Others 2005 6 SA 568 (SCA) par [41].

CML4504S 2022 TONG

 27

S 10(16) EXISTING RIGHTS OF LATER APPLICANTS

Section 10(16) provides that s10(15) will not be a ground for refusal where the earlier
application is in conflict with the existing rights of the person making the later
application.
This is not the easiest provision to understand but it could arise where the later
application claims a common law right. Have a look at Turbek v AD Spitz [2010] 2 All
SA 284 (SCA) for an example of the application.

S10(17) A MARK WHICH IS IDENTICAL OR SIMILAR TO A WELL KNOWN

REGISTERED TRADE MARK IN THE REPUBLIC IF SUCH USE WOULD BE
LIKELY TO TAKE UNFAIR ADVANTAGE OF, OR BE DETRIMENTAL TO, THE
DISTINCTIVE CHARACTER OR REPUTE OF THE REGISTERED TRADE MARK
EVEN THOUGH THERE IS NO DECEPTION OR CONFUSION.

Just like s 10(14) and s 10(12), elements of this provision are best understood when
we do infringement. Section 10(17) mirrors the infringement provisions in s 34(1)(c )
The ground for refusal may fall away if the proprietor of the registered well-known
mark consents to the registration.

CML4504S 2022 TONG

 28

D. AMENDMENTS & CORRECTIONS TO THE REGISTER

Sections 23 to 27 provide for opportunities to amend, rectify, alter, or remove what’s

on the register.

Remember, you are starting from the position that you have registered your trade
mark.

1. S23 AMENDMENTS
2. S24 RECTIFICATION
3. S25 ALTERATIONS
4. S26 REMOVAL OR VARIATION FOR BREACH OF CONDITION
5. S27 REMOVAL FOR NON-USE

1. S 23 AMENDMENTS OF THE REGISTER

Section 23 deals with clerical/administrative changes to the Register. There are

THREE entry points here:

1.1. At the instance of the Registrar (s23(1)).

The registrar may correct an error made by an official of the TMO. This is not
contentious.

1.2. At the request of the proprietor (s23(2))

Here the proprietor of the trade mark wants the registration to be changed. Have a
look at the five possibilities (s 23(2)(a)-(e).
What would be the effect of these changes? Who would be affected?

You need to review the five grounds. If you were a proprietor, when/why do you think
you would request these changes?

2. S 24 RECTIFICATION OF EXISTING REGISTERED TRADE MARKS

Here the matter may be before the Registrar or the Court (s 24(2)) as the case may
be. There are two broad categories of rectifications under s 24.

• Category 1 provides for interested persons (ie third parties such as competitors) to
apply for changes to the register.
• Category 2 provides a similar opportunity for the Registrar to voice its concern.

CML4504S 2022 TONG

 29

Category 1

- third parties – “any interested person”35– may apply for an order to make, remove
or vary the entry on the registrar in the case where:

(a) there is a non-insertion or omission from the register

(b) an entry was wrongly made in the register (namely, at the time the application
was received originally)
(c) an entry wrongly remaining (it was good at the time of the application but
something has happened which has changed things)
(d) there is an error or defect in the entry.

(a) there is a non-insertion or omission from the register

Here the interested person is concerned that something should be added to the
registration, usually a disclaimer or other conditions. By not adding it, the proprietor
would be entitled to greater rights than what ought to be conferred by the
registration.
Generally, third parties would use this provision when they want a disclaimer (or the
like) added to the register. Notice how this brings us back to s 9 and 10?

(b) an entry was wrongly made in the register (namely, at the time the
application was received originally)

We know that there is a pre-grant examination to make sure that the mark complies
with the law. Sometimes, the validity of the registration is only called into question
after the fact. Here, the argument is that the trade mark should not have been
registered at the outset – because it didn’t comply with the law in place at the time.
In other words, …OOPS!
This means that the applicant (who is usually wanting the trade mark to be removed
from the register on this ground) has to show that there were grounds for refusal of
the registration at the time of the application.

For marks which were registered under the current TMA, this inevitably means using
s 9 and 10 as they would have applied to the trade mark “back in the day” – ie when
the registration happened. If, for example, you claim that the mark was not
distinctive, then you would need to show that this was the case at the time of the
registration happening, and not at the time of your application for the removal.

HOWEVER, where the applicant relies on s 10(2), there is a little thingy you have to
look out for. Any ideas based on what you know about 10(2)?36

35 Who is an interested person? An interested person will be someone who is affected in some way
by the registration, in other words, they are not bringing the application frivolously or maliciously. A
trade rival or possible future trade rival or someone who wants to register a similar mark in the same
class, would fall into this category. See further Stanton Woodrush.
36 See also AM Moolla Group v Gap 2005 (6) SCA 568.

CML4504S 2022 TONG

 30

Here’s a little diversion which we have to take before we move on.

What happens if the registration took place under the previous Trade Marks
Act?
Section 70 of the current TMA provides that the law in force at the time would
determine the validity. The application for rectification relates to the circumstances in
existence at the time of the application. This means that one much check the 1963
Act to see if the mark was valid. Have a look at this – for background - we will focus
on the 1993 Act in the course.37

(c) an entry wrongly remaining

(it was good at the time of the application but something has happened since)

Rectification on this ground relates to trade marks which have become invalid after
registration – ie facts which exist at the time of the application for rectification.
In other words, there was nothing wrong with the trade mark at the time it was
registered, however, since then, something has happened which has resulted in the
mark falling foul of the law.
Here the claim is that the trade mark must be removed/expunged from the register.38

[Note that this provision can be used to remove the mark even if the original
registration was valid in terms of the 1963 Act. The continued registration is tested
against the current TMA (1993 Act).]40

37 For self-exploration – See Mars Incorp v Cadbury Swaziland 2000 SCA on how to apply this
provision- specifically the issue of s42 of the 1963 Act which provided that insofar as trade mark
registered in Part A of the register were concerned, they were taken as valid in all respects after 7
years. The issue is what happens when such a mark is challenged under the 1993 Act.
38 If you only want an amendment such as a disclaimer or a condition, then you would use s 24(1)(a)

to claim that there is an omission/error that needs attention.

39 Example: Registrar of Trade mark v Wassenaar 1957 4 SA 513 (A) at 530 -

Here the trade mark was used to name a new hybrid grass: “Hence it seems to me that the word
‘Ronpha’, standing by itself, only meant at most a grass associated with the name of the respondent as
an originator or producer and, naturally, a seller of it. It did not, standing by itself, indicate that that grass
was to be distinguished from the grass of other sellers who may have obtained their supplies from the
respondent and then cultivated ‘Ronpha’ for sale, . . .”
The issue is that if it is possible to ask “is this your Ronpha or my Ronpha” then Ronpha cannot be a
trade mark. But if we both cultivate grass of type Ronpha and I call mine Zumpha you call yours
Oompha then Zumpha could be a trade mark used to distinguish my Ronpha from your Ronpha.
Simple!
Also: Luster Products 1997 (3) SA 13 (A) - Shatterprufe had been registered in 1942. Was application
for expungement for lack of distinctiveness. Held that when it had been registered it met the
requirement for distinctiveness (acquired distinctiveness). In the expungement application was found
that was capable of distinguishing at time of the attack.
40 Die Bergkelder v Vredendal -SCA referred to the seven year clause. At par [14] Harms JA stated

that if the mark is not capable of distinguishing in the trade mark sense under s10, then it is liable to
be expunged unless it has in fact become capable of distinguishing. Here the container mark had
been registered in 1977. The court held that the mark was not capable of distinguishing under s10.

CML4504S 2022 TONG

 31

(d) there is an error or defect in the entry.

- gives third parties the opportunity to apply to have an error or defect corrected.

Category 2 (Section 24(3))

This provision gives the Registrar locus standi to apply to the court for rectification
under s 24. This would happen
-where the Registrar is satisfied that an entry has been secured mala fide or by
misrepresentation
-where the Registrar is satisfied that an entry was wrongly made or wrongly remains
on the registrar.

3. S 25 ALTERATIONS

The proprietor may apply to the registrar for leave to add to or alter the trade mark in
a way that does not substantially affect its identity. It seems that the effect should
not be to increase the scope of the existing registration. Example?

Note that the proprietor has to advertise the proposed alteration – this gives
interested persons41an opportunity to object

4. S 26 REMOVAL OR VARIATION FOR BREACH OF CONDITION

Where the proprietor does not operate within the confines of the registration, any
interested person or the registrar can make an application for the trade mark to be
removed from the register or for the registration to be varied in response to the
proprietor’s use of the trade mark.

Off we go to s 27…

41See above for who would be an interested person (not just any busybody neighbour). Note that the
procedure for advertisement of the altered mark and an opposition period is set out in the
Regulations.

CML4504S 2022 TONG

 32

5. S 27 REMOVAL FOR NON-USE

Section 27 creates the opportunity for an application to be made by interested

persons to have the trade mark removed on the ground that it has not been used for
the purposes registered. In such case, the court or registrar, as the case may be,
may remove the mark from the register.42

A. There are three grounds based on non-use which can be used to remove
the trade mark from the register (s27(1)(a), (b) and (c). There are also
limitations/things to know about each of the three.
B. In applying the provisions, a key issue for the courts has been the meaning
of “use” in this context.

A. There are three grounds based on non-use which can be used to remove
the trade mark from the register (s27(1)(a), (b) and (c). There are also
limitations/things to know about each of the three.

The three grounds are, broadly:

• S 27(1)(a) – no bona fide intention to use at the time of registration

• S 27(1)(b) – registration is all good but no bona fide use for a
continuous43period of five years subsequently
• S 27(1)(c)- that the trade mark proprietor has dissolved/died there has been a
two year period since during which there has been no attempt to assign the
trade mark to a new person.

S 27(1)(a) – no bona fide intention to use at the time of registration

The claim is that the trade mark was registered without any bona fide intention on
the part of the applicant for registration that it be used by the applicant or a permitted
user (eg a licensee, see s38) in relation to the goods or services.

The interested person applying for the removal has to show two things:
• the absence of a bona fide intention to use the mark at the time of registration
AND
• that until three months before this application to have the mark removed,
there was still no bona fide use. What is this three month period about?

But note that there are two additional things to bear in mind:
1. You cannot use this provision to remove a trade mark that is claiming protection
under s 35 of the TMA44. Since it is possible for s 35 to protect well-known foreign
marks even if they are NOT registered under the TMA, this limitation on s 27(1)(a)

42 Note also that s27(1) seems to leave a general discretion in the hands of the registrar/court by the
use of “may”. In the McDonald’s case (which dealt with equivalent section under the 1963 Act) the
AD held that the court retains a general or residual discretion not to expunge where exceptional
circumstances are present.
43 What is the difference between continual and continuous?
44 S 27(5)

CML4504S 2022 TONG

 33

could only actually apply where such mark has also been registered – in other
words, where the registered trade mark also meets the requirements of s 35.

2. Although the applicant for removal bears the burden of proving that the mark was
registered with bona fide intention etc, the onus of proving that there has been
relevant use of the trade mark rests upon the proprietor (s27(3)).

S 27(1)(b) – registration is all good but no bona fide use for a continuous
period of five years subsequently
This one looks tricky but it’s not. Here there was the intention to use the mark at the
time of registration, so you cannot rely on s 27(1)(a) but you have subsequently
failed to make bona fide use of the trade mark.

The non-use must be for a continuous period of at least five years.

In other words, if you stopped using it for two years and then started again, and then
stopped again for one year, and then started again for a year and then stopped for
three years, there would not be any basis for removal under this ground. That is
provided the use is bona fide and is “use” as intended by the TMA.

Like s 27(1)(b) there is that three-month period just before the application is made
during which any use you make, does not count and won’t bail you out of this mess.

But note that there are three additional things to bear in mind:
1. You cannot use this provision to remove a trade mark that is claiming protection
under s 35 of the TMA45 – remember, these are the well-known marks of foreigners
who claim protection under the Paris Convention.
Since it is possible for s 35 to protect well-known foreign marks even if they are NOT
registered under the TMA, this limitation on s 27(1)(b) could only actually apply
where such mark has also been registered – in other words, where the registered
trade mark also meets the requirements of s 35.

2. Although the applicant for removal bears the burden of proving that the mark was
registered with bona fide intention etc, the onus of proving that there has been
relevant use of the trade mark rests upon the proprietor (s27(3)).

3. Have a look at s 27(3) – this provides an exception from the rule that 5 years non-
use can be used to remove the mark. The proprietor may rely on ‘special
circumstances in the trade’ to justify the non-use of the mark.

The proprietor must show that the failure to use the mark was in fact due to those
special circumstances. Furthermore, the special circumstances must be such that
they affect others in the trade as well – in other words, that sector. It cannot simply
be that the proprietor’s personal circumstances rendered it impossible to use the
mark.
Also, it will not be sufficient to show that the special circumstances existed when the
non-use would have occurred regardless of the circumstances.46
45 S 27(5)
46 For interesting but not necessary reading on this see McDonalds TPD case where McDonalds
claimed that a reason for its non-use of its trade marks in South Africa at the time, was politically

CML4504S 2022 TONG

 34

S 27(1)(c)- that the trade mark proprietor has dissolved/died there has been a
two year period since during which there has been no attempt to assign the
trade mark to a new person.

Here we are dealing with a trade mark which is an orphan in the sense that its parent
on the register (body corporate or natural person proprietor) is no longer in
existence. If, after two years after such demise the trade mark is still hanging around
on the register, an interested person can apply to have it removed because it has
been abandoned. In such case, others are free to adopt the trade mark47and to try to
register it, or perhaps just use it in their business without the fear of infringement
under the TMA.

However, if it turns out that although the trade mark has not been assigned to a
successor-in-title (remember, the trade mark is an asset in the proprietor’s estate)
but that such a successor-in-title has actually been using the mark or intends to use
it, then the application to remove it from the register on this basis, may not succeed.

B. In applying the provisions, a key issue for the courts has been the meaning
of “use” in this context.

Firstly, recall that we looked at what the “definition” of use is – in other words, “how”
does one use a trade mark, is s2(2) and s 2(3) of the TMA.

Assuming that you have managed to overcome any practical issues on how to
use/apply your mark to your product, the more fascinating question relates to
whether what you are doing with your trade mark is “bona fide use in relation to the
goods or services” for the purposes of s 27.

Let’s say that you have a registered trade mark for the word GORP, registered
in Class 25 for clothing. Would the following instances meet the “bona fide use
in relation to the goods or services” and save your mark from removal for non-
use under s 27?

You use the word GORP on the sleeve of all your clothing items, but it is
barely visible.
You use the word GORP only on swimming gear such as swimcaps and
bathing suits.
You haven’t started manufacturing clothing yet but in anticipation you leave
plastic pens branded with the word GORP at the tillpoints of all sports clothing
stores, along with a flyer telling people that “GORP IS COMING TO TOWN”.

motivated trade sanctions. The comments from Southwood J are obiter because the matter didn’t
have to be decided.).
47 Subject of course to the usual registrability requirements.

CML4504S 2022 TONG

 35

A few things about “use” in the context of s 27:

(a) The use must be relevant use of the mark as a trade mark.
The use must be in relation to goods or services for the purposes of distinguishing
the goods or services of one person from the same kind of goods or services
connected in the course of trade with any other person. It does not matter that the
use is not extensive.

(b) What if the use to which the trade mark has been put does fall not squarely within
the goods or services in respect of which the trade mark is registered?
Read *Arjo Wiggins Ltd SCA?48
- the appellant had proved use of its registered trade mark in relation to carbonless
copying paper but sought to defend its registration in respect of “paper and paper
articles” [paras 19, 20]
“At source the difficulties spring from the incontestable fact that Arjo proved statutorily
relevant use of its trade mark on ‘paper’ – admittedly a sub-set of paper, but paper
nonetheless, since in the description of the traded goods ‘carbonless’ and ‘copying’
are merely attributes qualifying a commodity, and that commodity is expressly
protected by the registration sought to be expunged. It is therefore not surprising that
an attempt to draw lines within the commodity occasions both conceptual and
operational difficulties.”

Can you give examples of where this approach might apply?

(c) The use or intention to use must be bona fide.49

The use must be to further the proprietor’s trade in the goods in question, however,
use simply to throw a spanner in your rivals works would not be bona fide use.
But note, it does not matter that the use is not extensive.

(d) Licensed use is deemed to be use by the proprietor.

In other words, if the TM proprietor has licenced the trade mark to someone else, the
fact that the TM proprietor itself is not using the mark, does not make it vulnerable
under s 27. However, the licensee’s use must conform to use as a trade mark.

(e) Use of an associated mark may be equivalent proof of use [s31 (1)]
What does this mean? This is where is becomes useful if marks are associated – if
a trade mark registration is under threat for non-use but that registration is
associated with another one, and there is relevant use of the other one, then you can
rely on that use to keep your mark safe!

48 Read the case and extract the approach of the SCA. Considerations: Given the use to which the
trade mark has been made, is it commercially nonsensical to retain the registration? Are the
goods in relation to which the use has been made commercially different from the goods or services
in respect of which the registration exists? What if the use covers only some of the goods or
services in respect of which the trade mark is registered? The courts seem to say that one must
have reference to the objective nature of the goods and not the purpose for which it was
intended. The test is that of the notional reasonable man - ie how would such a person describe the
product? Thus, one must avoid the red tea caddy approach. One should also not limit the goods to a
specific age/image.
49 For more on s 27, see The Gap Inc v Salt of the Earth Creations (Pty) Ltd and others [2012] ZASCA

68; Extraction v Tyrecor SCA 2015

CML4504S 2022 TONG

 36

(f) The use of a whole of a registered trade mark which includes the use of the trade
mark in question, may be considered as use [s31(2)].
It is possible that a proprietor has registered multiple trademarks over different
aspects of the sign.

For example: you have a transport business called ESCOWGO.

You register the following trade marks:

TM 1: ESCOWGO

TM 2: ES GO

TM 3: GO

You haven’t used TM 3 for many years but you have used TM 2. An attempt to
remove TM 3 on the basis of non-use will fail if you can show that you were using
TM2 which encapsulates TM3.

(f) Here is another provision to save you from being attacked for non-use.
Let’s say that you produce clothing under the GORP label but you do not intend to
sell those goods in South Africa. You only export the clothing. Technically, it looks
like you have not made use of it in SA – ie you haven’t used GORP to distinguish
your products from others in the course of trade. However, under s 64, use of the
mark for export is deemed to be use of the mark within South Africa.

READ: GAP v Moolla 2015 SCA50.

50
This case covers a lot of things! Section 27 is one of them. It also deals with s 35 marks. Don’t be
overwhelmed by the length of the case. Read it lightly, especially the part about s 35, and focus on s
27 on non-use

CML4504S 2022 TONG

 37

E. INFRINGEMENT

SECTION 34(1) INFRINGEMENT INTRO

TMS s34(1) = the right to stop others from doing the THREE THINGS in s 34(1)(a),
(b), and (c).

Section 34 applies to all trade marks on the register, regardless of whether they
had been registered under the 1963 Act. So, the fact that you got onto the register
under the old Act does not mean that we use the old Act to determine infringement.
The current TMA applies.

Infringement actions may be instituted by the registered proprietor or in some cases,

by a registered user of the trade mark (s38(4)).

Who can use s 34?

Infringement proceedings under s34 may only be instituted in respect of the alleged
infringement of a registered trade mark (s33).

1. SECTION 34(1)(A )
Section 34(1)(a) provides that the rights acquired by registration of a trade mark shall
be infringed by –
the unauthorised use in the course of trade in relation to goods or services in
respect of which the trade mark is registered, of an identical mark or of a mark
so nearly resembling it as to be likely to deceive or cause confusion.51

Section 34(1)(a) is your “classic” infringement – it is a good reflection of what trade

mark protection is all about. Your registration lets you stop others from using the
same or similar mark in competition with you provided that the use of the trade mark
by the competitor would likely deceive or confuse the consumer.

What is this deception or confusion about?

The consumer will think that the infringer’s product comes from the trade mark
proprietor and the result of this is a diversion of trade. This is not the way one should
conduct business, at least it is not the way to conduct business fairly.

BUT your registration is limited – if there is no such confusion/deception even though

the competitor has used a similar mark, then you cannot rely on s 34(1)(a).

This is a suggested breakdown of what the plaintiff will have to establish:

51Have you checked that this what’s in s 34(1)(a) or are you just taking a shortcut and trusting me?
Go check. Don’t trust anyone with something as important as legislation – because if you get it
wrong, it just looks VERY BAD.

CML4504S 2022 TONG

 38

1.1. Unauthorised Use

This is a bit obvious – but the defendant’s use of the trade mark must be
unauthorised.

1.2. Use in relation to the goods or services in respect of which the trade
mark is registered

The use must be in relation to the same goods or services for which the mark is
registered.

If your trade mark GORP is registered for clothing (Class 25) and I use GORP to sell
laptops, you will not be able to rely on s 34(1)(a).

What if I use GORP to sell fabric face masks?

Then you will have to establish that face masks fall within the scope of the
goods for which you have the registration. If face masks are not clothing, then
you cannot use s 34(1)(a). However, if face masks are clothing, then even if
you do not trade in face masks, you could still rely on s 34(1)(a). Your
registration gives you the right to stop others using the mark on any goods to
which your registration extends even if you are not actually selling the specific
item.

We have to ask what use could you make of the mark based on your
registration – in other words, what is the notional use which you could make of
your registration. If face masks are clothing then even though you are not
selling face masks, you could sell them under the registered trade mark if you
wanted to!

1.3. Use in the course of trade

We know that it must be use in relation to the same goods but is this any use in the
course of trade in relation to the same goods?

Read Verimark and Die Bergkelder – what does Verimark say about the use?

In that case Verimark USED the BMW trade mark in the course of trading in the
same goods (car polish) for which BMW had a registration

– so it looks like it meets s 34(1)(a)? Right? BUT…What was the key thing that
should characterise “use in the course of trade” in these circumstances?

CML4504S 2022 TONG

 39

1.4. identical mark or of a mark so nearly resembling the registered trade mark
as to be likely to deceive or cause confusion

Now that you have established unauthorised use as a trade mark in the course of trade
in the same goods, you still need to show that this will likely result in deception or
confusion. If this is absent, then there is no infringement.

First thing: the Act does not require that you prove actual deception/confusion – we’re
talking about a probability or likelihood (of course if you lead evidence of actual
deception/confusion it would strengthen your case but it is not a given).

Second thing: to understand how we make this comparison, we have to look to the
courts. The following are key to understanding how the courts have approached this
part of the enquiry.
➢ Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd is probably one of
the most often-quoted cases in this regard. Read it but skip over all the
procedural elements and jump straight to the issue of how to make the
determination (note also that this case looked at infringement under the old
Act):
‘In an infringement action the onus is on the plaintiff to show the probability or
likelihood of deception or confusion. It is not incumbent upon the plaintiff to show
that every person interested or concerned (usually as customer) in the class of
goods for which his trade mark has been registered would probably be deceived
or confused. It is sufficient if the probabilities establish that a substantial number
of such persons will be deceived or confused. The concept of deception or
confusion is not limited to inducing in the minds of interested persons the
erroneous belief or impression that the goods in relation to which the defendant’s
mark is used are the goods of the proprietor of the registered mark, i.e. the
plaintiff, or that there is a material connection between the defendant’s goods
and the proprietor of the registered mark; it is enough for the plaintiff to show that
a substantial number of persons will probably be confused as to the origin of the
goods or the existence or non-existence of such a connection.’

➢ Bata Ltd v Face Fashions CC 2002 (1) SA 844 (SCA) which approved the
concept of ‘global appreciation’ as follows:
‘A similar approach was adopted by the European Court of Justice in Sabel BV
v Puma AG, Rudolf Dassler Sport [1998] RPC 199. At 224 it was said that the
likelihood of confusion must ‘be appreciated globally’ and that the ‘global
appreciation of the visual, aural or conceptual similarity of the marks in question,
must be based on the overall impression given by the marks, bearing in mind, in
particular, their distinctiveness and dominant components’.

➢ Have a look at Cowbell; Société des Produits Nestlé SA v International

Foodstuffs [2014] ZASCA 187; Distell v KZN ZASCA 2016 – for further examples.

➢ When making the comparison, one must also consider the following:

CML4504S 2022 TONG

 40

Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd:

‘The determination of these questions involves essentially a comparison between
the mark used by the defendant and the registered mark and, having regard to
the similarities and differences in the two marks, an assessment of the impact
which the defendant’s mark would make upon the average type of customer who
would be likely to purchase the kind of goods to which the marks are applied.
This notional customer must be conceived of as a person of average intelligence,
having proper eyesight and buying with ordinary caution. The comparison must
be made with reference to the sense, sound and appearance of the marks. The
marks must be viewed as they would be encountered in the market place and
against the background of relevant surrounding circumstances. The marks must
not only be considered side by side, but also separately. It must be borne in mind
that the ordinary purchaser may encounter goods, bearing the defendant’s mark,
with an imperfect recollection of the registered mark and due allowance must be
made for this. If each of the marks contains a main or dominant feature or idea
the likely impact made by this on the mind of the customer must be taken into
account. As it has been put, marks are remembered rather by general impression
or by some significant or striking feature than by a photographic recollection of
the whole. And finally consideration must be given to the manner in which the
marks are likely to be employed as, for example, the use of name marks in
conjunction with a generic description of the goods.’ (640)

➢ Note that the comparison is limited to the marks alone – neither side may rely
on extraneous matter. In other words, the fact that the defendant’s goods are
distinguished from those of the proprietor of the mark by matter extraneous to
the mark itself is irrelevant for purposes of infringement, eg on labels etc.
It is about comparing the mark that the defendant used with that which is
registered.52

➢ One can take disclaimed matter into account when comparing the marks
(although this does not mean that use of a disclaimed element in itself
amounts to infringement.

➢ Read Adidas v Pepkor Retail 2013 ZASCA 3 – on s 34(1)(a) – thoughts? And

Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd
(1088/2015) 2016 ZASCA 118 (15 September 2016)

52 National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd - ROMANTIC DREAMS infringement of
ROMANY CREAMS?:
‘It is important to bear in mind, particularly in a case like the present one, in which the packaging of the
respective products has been reproduced in the papers, that the likelihood (or otherwise) of deception
or confusion must be attributable to the resemblance (or otherwise) of the marks themselves and not
to extraneous matter …Similarities in the goods themselves or in the form in which they are presented
might form the basis for an action for passing-off, but that is not what is before us, and for the present
purposes they must be disregarded.’ (at 567E-F)

CML4504S 2022 TONG

 41

2. SECTION 34(1)(b) SIMILAR GOOD OR SERVICES

Section 34(1)(b) provides that the rights acquired by registration of a trade mark shall
be infringed by –

‘The unauthorised use of a mark which is identical or similar to the trade mark
registered, in the course of trade in relation to goods or services which are so
similar to the goods or services in respect of which the trade mark is registered,
that in such use there exists the likelihood of deception or confusion.’

What is the key difference? And what is the effect?

The scope of the protection is widened and conforms to international requirements

that protection cover similar goods and services (art 16.1 TRIPS.).

The Plaintiff has to prove:

2.1. unauthorised use

Easy enough – same as s 34(1)(a) – see above.

2.2. use course of trade

This aspect is the same as 34(1)(a) and probably means use a trade mark per
Verimark v BMW.

2.3 identical mark or of a mark that is identical or similar to the trademark

registered

Although this section differs from s34(1)(a) in that it refers to a mark ‘similar ‘ as
opposed to one ‘so nearly resembling’ the registered mark, the approach to making
that determination is regarded as the same – so the same principles mentioned
above apply.

2.4.‘that the use is in relation to goods or services which are so similar to the
goods or services in respect of which the trade mark is registered so that in
such use there exists the likelihood of deception or confusion’

Here’s where it gets interesting!

Whereas s 34(1)(a) requires SAME goods/services as the one for which the plaintiff
has a registration, the requirement here is different. It expands the trade mark
proprietor’s scope to goods/services which are outside of the registration as long as
they as SIMILAR. The nett effect needs to be that there is the likelihood of
deception/confusion.53

53Personally I think that this provision is generally open to confusion given the way in which it is
drafted and the way in which the courts consider it…

CML4504S 2022 TONG

 42

** although you may be tempted to say that goods which are similar should include
goods which are the same and therefore one could ignore s 34(1)(a) and just use
34(1)(b) for both, you should stop in your tracks. You have to pick your lane. The goods
are either the same OR similar.

How do we go about comparing/deciding?

The test is whether the goods and services are so similar to the goods and services
for which the trade mark is registered that in use of the same or similar trade mark
on them, there exists a likelihood of confusion or deception. The public must be
misled into believing that the similar goods or services are connected with the
proprietor of the trade mark.

Have a look at these cases to shed light and then we can chat about them in the
forums.
Danco Clothing (Pty) Ltd v Nu-care Marketing Sales and Promotions (Pty) Ltd 1991
4 SA 850 A @ 851
New Media Publishing (Pty) Ltd v Eating Out Web Services CC 2005 5 SA 388 (C)
Mettenheimer v Zonquasdrift Vineyards 2013 ZASCA 152

➢ What are the factors which the court looked at in *Danco to determe that the
likelihood of deception or confusion amongst a substantial number of persons
had been established ? (@860)

➢ New Media Publishing (Pty) Ltd v Eating Out Web Services CC and Another -
regard should be had to both the degree of similarity between the respective
goods and the degree of similarity between the respective marks.

- at 394: ‘There is, it seems to me, an interdependence between the two legs
of the inquiry: the less the similarity between the respective goods or services
of the parties, the greater will be the degree of resemblance required between
their respective marks before it can be said that there is a likelihood of deception
or confusion in the use of the allegedly offending mark, and vice versa. Of
course, if the respective goods or services of the parties are so dissimilar to
each other that there is no likelihood of deception or confusion, the use by the
respondent even of a mark which is identical to the applicant’s registered mark
will not constitute an infringement; also, if the two marks are sufficiently
dissimilar to each other no amount of similarity between the respective goods
or services of the parties will suffice to bring about an infringement.’

➢ It appears that the closer the similarity between the goods ,the greater the
difference that is required in the marks, if one is to prevent infringement. It
seems that it is the combined effect that seals the deal.

CML4504S 2022 TONG

 43

CML4504S 2022 TONG

 44

3. SECTION 34(1)(c )ANTI-DILUTION

Read s 34(1)(c ) and compare it to (a) and (b).

This section protects (prevents the dilution of) the selling power of a mark as well as
the advertising value of a registered well-known mark against what is commonly
referred to as dilution. It thus recognises that a trade mark functions as more than
simply a badge of origin. There is no deception or confusion as to the origin, but
the use erodes the selling power through the dilution of reputation and/or
distinctiveness character.

Generally there are two ways in which this erosion happens.

Here the trade mark is typically used in relation non-competing goods or services;
the distinctiveness and uniqueness of the trade mark is blurred and thereby diluted.
The classic example is this:
“‘If you allow Rolls Royce restaurants, Rolls Royce cafeterias, Rolls Royce pants and
Rolls Royce candy, in ten years you will not have the Rolls Royce mark any more”
Frank I Schechter 1927 “The rational basis of trade mark protection”

Example: See Société des Produits Nestlé SA v International Foodstuffs [2014]

ZASCA 187

This is where unfavourable associations are created between the well-known

registered trade mark and the mark of the defendant. Think of parody. The Laugh it
Off v SAB matter is a good example of this.

See Constitutional Court at par 41: “When one considers the origins of the anti-dilution
doctrine in the law of trade marks, it appears that its initial target was to avoid blurring.
But the law has advanced to include protection of a trade mark against tarnishment. I
should now explain that the dilution of a trade mark appears to occur in two ways, by
blurring or by tarnishment. Blurring takes place when the distinctive character or
inherent uniqueness of a trade mark is weakened or reduced. Tarnishment occurs
where unfavourable associations are created between a well-known registered trade
mark and the mark of the unauthorised user. In a case of tarnishment, the object of
the protection appears to be the repute, the good selling name of the mark.”

CML4504S 2022 TONG

 45

Infringement under s34(1)(c) depends on the Plaintiff showing:

1. use of a mark which is identical or similar to a registered trade mark

The likelihood of deception or confusion does not play a role but obviously if the
marks are so different that there is no clear link between it and the trade mark, the
provision would not apply.

• Blue Lion at par [12] ‘The word “similar” as it is used in the section has its
ordinary meaning, which is “a marked resemblance or likeness”.

• Bata Ltd v Face Fashions CC 2001 1 SA 844 (SCA) at 852:

‘‘Similar’ must obviously be construed in the context in which it appears and, in my view, it
should not be given too wide or extensive an interpretation for the purposes of s 34(1)(c). The
section, while seeking to preserve the reputation of a registered mark, introduces a new concept
into South African law. If the word ‘similar’ is given too extensive an interpretation the section
might have the effect of creating an unacceptable monopoly to the proprietor of a trade mark
and thus unduly stultify freedom of trade. I doubt whether the Legislature could have intended
such a result. I am inclined to hold, therefore, that the section does not apply if the two marks
are similar merely because they contain features of the same kind or because there is a slight
resemblance between them. In The Oxford English Dictionary vol XV at 490 one of the
meanings given to ‘similar’ is ‘having’ a marked resemblance or likeness’. This seems to be
an appropriate meaning to be given to the word for the purposes of the section. The first
respondent’s mark might possibly be regarded as having a slight or superficial resemblance to
those of the appellant but the likeness between the two is not sufficiently close or marked to
enable this Court to hold that they are similar for the purposes of s 34(1)(c).’

2. the unauthorised use

Like with the first two grounds, if the use is authorised, eg through a licence or such,
then there is no basis for infringement.

3.3. in the course of trade in relation to any goods or services

The use of the trade mark by the alleged infringer must be in the course of trade.

Here it appears to not be restricted to trade in the goods for which the trade mark is
registered but simply trade generally. In other words, any type of goods/services. To
interpret this otherwise makes the whole purpose of the section pointless.
This is a clear shift away from (a) and (b) which required that the use be as a trade
mark in relation to the same or similar goods respectively.

In (c) it seems that the use need not even be trade mark use (ie for the purposes of
distinguishing in the trade mark sense – for example, the use of SAB on T-shirts was
not for the purposes of distinguishing T-shirts but rather to make a statement.
This does not mean that trade mark use is excluded – it simply means that the
section is broad enough to include non-trade mark use.
[eg Verimark (Pty) Ltd v BMW AG [2007] SCA 53 (RSA)]

CML4504S 2022 TONG

 46

4. trade mark is well-known in the Republic

This is a key distinguishing feature of (c). It is LIMITED to registered trade marks

which are well-known.

What makes a trade mark “well-known” for the purposes of the TMA?
Whether or not a mark is well-known is a question of fact.

Section 34 does not offer any assistance. However, the term does come up in s 35,
and s 35(1A) provides some guidance in so far as the term is used in s 35(1).

Can we use s 35 to assist?

Yes - Triomed (Pty) Ltd v Beecham Group plc 2001 (2) SA 522 (T) - the phrase
should be given the same meaning wherever it is used in the statute. In that case
they replied on the interpretation in the McDonalds case (in respect of s35).

Triomed at 556B-D:
“The meaning of well known…has not been considered in the context of s34(1)(c ) of the Act
but has been dealt with by the Appellate Division in the context s 35 of the Act. In
McDonald’s Corporation v Joburgers Drive-Inn Restaurant and Another…it was held that
“well known” in the context of s35 of the Act means a reputation such as that required for the
common law of passing off. Such reputation must extend to a substantial number of
members of the public or persons in the trade in question. In my view the interpretation given
to the expression in the context of s35 of the Act in the McDonald’s case could appropriately
be applied to the interpretation of “well known in the Republic” as this expression appears in
s34(1) (c ) of the Act.”

According to McDonalds the degree of awareness is similar to that in a passing off

action, ie the reputation must extent to a substantial number of members of the
public or persons in the trade in question. We will be looking at passing off when we
do unlawful competition next term.

Note that well-known does not mean that everyone in the country must know of the
mark – rather we focus on the specific sector in question and check whether the
trade mark has a reputation among a substantial number of that sector.

This of course raises further questions, like how to decide the scope of the sector!

Read: Safari Surf Shop v Heavywater 1996 All SA 316 (D) – what did the court say
about this? To whom should knowledge of the trade mark extend?
See also Truworths/Primark – re s 35.

CML4504S 2022 TONG

 47

5. ‘use of the mark likely to take unfair advantage of’ or

‘be detrimental to’ ‘the distinctive character or the repute of the registered
trade mark’

Now that the first four elements are there, there is a split – the plaintiff must show
either unfair advantage (blurring) or detriment (tarnishment).

Note that these are not the same and you need to be clear about which leg you are
relying on.

TASK: In Laugh it Off SCA what was the key basis for SAB not being able to prove
infringement?

6. ‘notwithstanding the absence of confusion or deception’

Infringement does not hinge on the consumer being confused or deceived. In other
words, the consumer knows that the infringer is not the source of the product and
that there is no connection between the infringer’s product and the trade mark
proprietor – there is no diversion of trade.
This should make you pause to reflect on the purpose of this provision!

Laugh it Off case – a few prods for your reading:

• Anti-dilution provision must be compatible with the right to free expression
entrenched in s 16 of the Constitution - the interpretation which is the least
destructive/intrusive of other constitutional rights must be followed.

• “In order to succeed the owner of the mark bears the onus to demonstrate likely
substantial harm or detriment which…amounts to unfairness” - not mere discomfort
etc. SAB failed to establish likelihood of unfavourable association, likelihood of loss
of sales or reduced commercial magnetism.

• The Constitutional Court:

“Therefore, on its terms the section has internal limitations. It sets fairness and materiality
standards. The section does not limit use that takes fair advantage of the mark or that does not
threaten substantial harm to the repute of the mark, or indeed that may lead to harm but in a
fair manner. What is fair will have to be assessed case by case with due regard to the factual
matrix and other context of the case. A court will have to weigh carefully the competing
interests of the owner of the mark against the claim of free expression of a user without
permission.
. . . The exercise calls for an evaluation of the importance of the purpose, nature, extent and
impact of the limitation of free expression invoked against claims of unfair advantage or of
likelihood of material detriment to a registered mark. In sum, in order to succeed the owner of
the mark bears the onus to demonstrate likelihood of substantial harm or detriment which, seen
within the context of the case, amounts to unfairness.”

CML4504S 2022 TONG

 48

• Note that the Supreme Court of Appeal had found that there was dilution in that the
message was likely to create in the minds of consumers a particularly unwholesome,
unsavoury, or degrading association with the registered marks and that anyone who
has seen the T-shirt would not be able thereafter to disassociate it from SAB’s trade
marks. This was rejected by the CC:

“In my view, the inference of material detriment made by the SCA hinges solely on the meaning
it has attached to the impugned publication on the T-shirts. Even accepting that meaning, as
evidence it is at best scant and unconvincing as an indicator of substantial economic harm to
the respondent’s marks. It is appropriate to observe that the mere fact that the expressive act
may indeed stir discomfort in some and appear to be morally reprobate or unsavoury to others
is not ordinarily indicative of a breach of section 34(1)(c). Such a moral or other censure is an
irrelevant consideration if the expression enjoys protection under the Constitution. Of course
freedom of expression is not boundless but may not be limited in a manner other than authorised
by the Constitution itself such as by the law of defamation. The constitutional guarantee of free
expression is available to all under the sway of our Constitution, even where others may deem
the expression unsavoury, unwholesome or degrading. To that extent ordinarily such meaning
should enjoy protection as fair use and should not amount to tarnishment of the trade marks.
[footnote omitted]”

• Thus, in the facts of the case in point:

“[i]t is plain from the record that no evidence, direct or inferential, was adduced to establish
likelihood of detriment either in the sense of unfavourable associations that have been created
between the registered marks and the illustration on the T-shirts, or in the context of a
likelihood of loss of sales by virtue of the reduced commercial magnetism of the mark. In
theory and in live trade there is a direct link between the mark and sales. As it is often said, the
mark actually sells the goods and it is the acquired asset that the section seeks to protect from
tarnishment.”

• From Webster and Page Law of South African Trade Marks par 12.25:
‘In Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a
Sabmark International the Constitutional Court commented that it is trite that, under our
constitutional democracy, the requirements of section 34(1)(c) ought to be understood through
the prism of the Constitution and specifically that of the guarantee of freedom of expression.
The court criticised the two-stage approach of the Supreme Court of Appeal, in which the first
enquiry was whether there was infringement in terms section 34(1)(c) and only thereafter
whether such infringement is excused by an assertion of freedom of expression, stating:
The two-stage approach advocated by the SCA in effect prevents an understanding of the
internal requirements of the section through the lens of the Constitution. The injunction to
construe statutes consistent with the Constitution means that, where reasonably possible, the
court is obliged to promote the rights entrenched by it. In this case the SCA was obliged to
balance out the interests of the owner of the marks against the claim of free expression for the
very purpose of determining what is unfair and materially harmful to the marks. It is to that
task that I now turn.
The Court then considered section 16 of the Constitution and concluded that
We are obliged to delineate the bounds of the constitutional guarantee of free expression
generously. Section 16 is in two parts: the first subsection sets out expression protected under
the Constitution. It indeed has an expansive reach which encompasses freedom of the press and

CML4504S 2022 TONG

 49

other media, freedom to receive or impart information or ideas, freedom of artistic creativity,
academic freedom and freedom of scientific research. The second part contains three categories
of expression which are expressly excluded from constitutional protection. It follows clearly
that unless an expressive act is excluded by section 16(2) it is protected expression. Plainly,
the right to free expression in our Constitution is neither paramount over other guaranteed
rights nor limitless. As Kriegler J in S v Mamabolo puts it: “With us it is not a pre-eminent
freedom ranking above all others. It is not even an unqualified right.” In appropriate
circumstances authorised by the Constitution itself, a law of general application may limit
freedom of expression.
. . . It is so that the anti-dilution prohibition under section 34(1)(c) seeks, in effect, to oust
certain expressive conduct in relation to registered marks with repute. It thus limits the right to
free expression embodied in at least section 16(1)(a) to (c) of the Constitution. We are however
not seized with the adjudication of the constitutional validity of the section. We must assume
without deciding that the limitation is reasonable and justifiable in an open and democratic
society to which our Constitution is committed. That in turn impels us to a construction of
section 34(1)(c) most compatible with the right to free expression. The anti-dilution provision
must bear a meaning which is the least destructive of other entrenched rights and in this case
free expression rights. The reach of the statutory prohibition must be curtailed to the least
intrusive means necessary to achieve the purpose of the section. Courts must be astute not to
convert the anti-dilution safeguard of renowned trade marks usually controlled by powerful
financial interests into a monopoly adverse to other claims of expressive conduct of at least
equal cogency and worth in our broader society. [footnotes omitted]’

Take a break! Get coffee and look up this one!

REMEDIES UNDER S 34(3)

Note that these (ie in s 34(3) ONLY APPLY TO S 34 infringements ie registered

trade marks). You don’t need to go into detail for the course but you need to know
what they are.

CML4504S 2022 TONG

 50

F. DEFENCES TO s34(1) INFRINGEMENT

DEFENCES ITO SECTION 34(2)

Section 34(2) sets out the circumstances in which a registered trade mark will not be
infringed.

34(2)(a) Bona fide use by a person of his own name, the name of his place of
business, the name of any of his predecessors in business, or the name of any
such predecessor’s place of business

Plus see the two provisos which apply:

(i) This exception does not apply to a juristic person whose name was registered
after the date of registration (application) of the trademark. In other words, if the TM
that you are being accused of infringing was registered on 1 June 2018, and your
business/juristic name which happens to be the source of the infringement, was
registered on 1 June 2020, you cannot rely on 34(2)(a) to dodge infringement.

(ii) The use must be consistent with fair practice.

Consider the following:

• What is a name?
Natural persons: refers to the full name of the person, not simply the surname or first
name, thus you cannot rely simply on your surname or first name for this section. 54
This also applies to a juristic person’s name, although you could probably not need
to add the exact designation like Ltd/, etc.

‘However, it is permissible to use the natural abbreviation of a company name by omitting

the word “Limited” or some other designation which identifies the precise nature of the
company. In South African Breweries Ltd v Namibia Breweries Ltd the court considered
whether “name” in section 34(2)(a) of the Act meant “Hansa Brauerei”, the term used by the
respondent, or “Hansa Brauerei Limited”.[…] I have no hesitation in adopting and applying
this approach to the use of ‘Hansa Brauerei’ instead of the full corporate description ‘Hansa
Brauerei Limited’. I cannot imagine that in ordinary parlance the word ‘Limited’ will be used
when referring to the entity ‘Hansa Brauerei Limited’. The name by which that entity is
known is Hansa Brauerei with perhaps Swakopmund’ (Unreported judgment TPD case
no 25185/2001 27 August 2002/ Extract from Webster and Page South African law
of Trade marks par 12.37.3)

• What is Fair Practice?

If you know that someone has registered a TM that is the same as your name, you
cannot start using your name as a TM if doing so would cause deception or
confusion.55

54 See for example Ninos Coffee Bar 1998 3 SA 656 (C) 674.
55 J Goddard & Sons v RS Goddard & J Mentz & Co 1924 TPD 290 (corresponding section under
1916 Act) held that where a person with knowledge of prior use of the same names by another, uses
his own name in circumstances which are likely to cause deception, such use cannot constitute bona
fide use.

CML4504S 2022 TONG

 51

• The use must be Bona Fide. Don’t be dodgy – ie to divert consumers.

Example: Assume McDonald’s is registered for restaurant services. You start a
restaurant and use McDonald’s as your name. Your full name is Curtis McDonald.
When McDonald’s Co sues you for TM infringement, you will not be able to rely on
34(2)(a) because you are not using your own name. Your name for the purposes of
this defence, must be your full name. Admittedly, a restaurant called Curtis McDonald
is not a particularly catchy name, but such is life. Do the common sense thing – go
find another name for your restaurant.

34(2)(b) use 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 the
rendering of services
• If you need to use a word/term to describe your goods or services and it turns
out that the same or similar terms are registered TMs, you will not be
infringing is your use is bona fide and consistent with fair practice.

However, if you are using that term in a trade mark sense – in other words
to distinguish your goods versus describing them, then you are on shaky
ground.56 As soon as it looks like you are actually trying to deceive or confuse
consumers into thinking your product is that of the TM owner’s product, you
are heading out of this defence.

• Note that the fair practice proviso applies here.

See Plascon-Evans Paints (Pty) Ltd v Van Riebeeck Paints 1984 (3) SA 623 (A) at
644 (dealing with corresponding section under the 1963 Act), per Corbett JA:
‘without attempting to give an exact definition of what constitutes a bona fide description for
the purposes of s46(b), it seems to me that what the legislature intended to safeguard by
means of the provisions of the subsection is the use by a trader, in relation to his goods, of
words, which are fairly descriptive of his goods, genuinely for the purpose of describing the
character or quality of the goods: the use of the words must not be a mere device to secure
some ulterior object, as for example where the words are used in order to take advantage of
the goodwill attaching to the registered trade mark of another’

Read: Tri-ang Pedigree (SA) (Pty) Ltd v Prima Toys (Pty) Ltd 1985 1 SA 448 (A)57
Standard Bank of SA v United Bank Ltd 1991 (4) SA 780 (T)

56
Because, remember, the plaintiff has the registration ie the right to use it as a trade mark – you
don’t.
57 Tri-ang Pedigree (SA) (Pty) Ltd v Prima Toys (Pty) Ltd 1985 1 SA 448 (A). Tri-ang was the TM
proprietor of FIRST LOVE. It marketed another doll, under the trade mark BABY FIRST LOVE. Prima
Toys brought a trade mark infringement action based on their registered trade mark BABY LOVE.
Although the court accepted that the word “BABY” was descriptive of a doll it went on to state:
‘Section 46(b) protects any bona fide description of the character or quality of the goods. ‘Baby’ as used
in BABY FIRST LOVE was not being used to describe the character or quality of the doll. It was used
as part of a trade mark.’

CML4504S 2022 TONG

 52

s34(2)(c) the bona fide use of the trade mark in relation to goods or services
where it is reasonable to indicate the intended purpose of such goods,
including spare parts and accessories, and such services

• Again, that fair practice proviso applies here.

• The aim is to cover situations where the supplier of spare parts uses a
registered tm to inform the public that it is supplying authorised spare parts
that fit the genuine goods of the TM proprietor.
Example?
It is Permissible to advertise non-genuine pirate parts or accessories as “spares and
accessories for BMW vehicles” but it would not be permissible to describe them as
“BMW spares”.

What would not constitute bona fide use under s34(2)(c)? Possibly if:
-it is done in such a manner as to give the impression that there is a commercial
connection between the third party and the trade mark owner;
-it affects the value of the trade mark by taking unfair advantage of its distinctive
character or repute;
-it entails the discrediting or denigration of that mark

Read: Commercial Auto Glass v BMW [2007] SCA 96 RSA

s34(2)(d) The importation into or the 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
Your registration of the TM does not entitle you to control the individual items which
bear the TM if you have applied the TM or given permission for it to be applied, to
those items/goods.

Why? Once you put your goods on the market, your trade mark right should not
allow you to retain control over it. This goes back to the purpose of TMs.
This means that goods which are legitimately on the market under your trademark,
regardless of where the TM was applied to those goods, can be sold, imported, or
distributed without your further permission as TM holder.

You cannot claim infringement if someone imports goods bearing your TM if the TM
was placed on the goods by you/with your permission. They are, therefore, genuinely
branded goods. However, if the goods have been altered in a way that renders them
no longer genuine, then the defence will not apply.58

To see what we are talking about here, skim read:

- Protective mining & Industrial Equipment Systems (Pty) Ltd v Audiolens (Cape)
(Pty) Ltd 1987 (2) SA 961 (A) (Old Act): ‘I do not express any view on what the
position would have been if the articles had been altered, damaged, changed or had

58
The parallel importation of ‘grey goods’, even if made by a licensee, is not infringement. The goods
must be ‘genuine’ goods. If the goods have been altered in a way that renders them no longer
genuine, then the defence will not apply.

CML4504S 2022 TONG

 53

depreciated after the affixing of the trade mark and before their sale by the
respondent.’

-Television Radio Centre (Pty) Ltd v Sony Kabushiki Kaisha t/a Sony Corporation
1987 2 SA 994 (A) at 1013- depends on whether the goods can be considered not to
be genuine goods because they differ.

‘To sum up: the recorders imported by Television will not work at all in South Africa unless
converted. Conversion requires operations of a technical nature which are not insubstantial.
Even after conversion, the recorders perform less well than may reasonably be expected of
new machines. In these circumstances I agree with Mr Bishop that the recorders converted by
Television must, for purposes of this appeal, be regarded as machines different from those
imported. It follows therefore, that the recorders sold by Television are not the 'genuine
goods' which were marked by Sony with its trade mark. The sale of such recorders bearing
Sony's trade mark constitutes, in my view, an infringement pursuant to s 44(1)(a) of the Act.’

s34(2)(e) bona fide use of any utilitarian features embodied in a container,

shape, configuration, colour or pattern which is registered as a trade mark
If your registration includes utilitarian features (perhaps there is a shape involved, as
an example), and someone else uses that utilitarian aspect of your TM, they will not
be infringing is that use is bona fide. You should not be entitled to stop others using
functional elements.

Meaning of ‘utilitarian’?
Cointreau et Cie SA v Pagan International 1991 4 SA 706 (A) at 712-713:
‘According to the Oxford English Dictionary ‘utilitarian’, in what appears to be the most
apposite adjectival sense, means ‘of or pertaining to utility’; and the relevant meaning of
‘utility’ seems to be: ‘the fact, character or quality of being useful or serviceable; fitness for
some desirable purpose or valuable end; usefulness, serviceableness’.

And at 714D
‘It must be recognised that in many instances a container feature cannot be categorised as
purely functional (or utilitarian) or purely non-functional (or non-utilitarian). Thus, for
example, a container may have a very unusual and distinctive overall shape or be equipped
with a uniquely ornamental stopper. The overall shape is not wholly non-functional (or non-
utilitarian) for it does serve to hold the contents of the container, but on the other hand because
of its unusual and distinctive shape it cannot be classed as purely functional (or utilitarian) and
the same is true of the ornamental stopper. In these circumstances the issue as to whether the
feature is functional (or utilitarian) or not becomes a matter of degree.’

This defence will only apply to the use of features which serve primarily or
predominantly functional or utilitarian purpose.

CML4504S 2022 TONG

 54

s34(2)(f) Use of a trade mark in any manner in respect of or in relation to goods

to be sold or otherwise traded in, or services to be performed, in any place, or
in relation to goods to be exported to any market, or in any manner in relation
to which, having regard to any conditions or limitations entered in the register,
the registration does not extend.

There are two defences wrapped up in (f).

1. Recall that a TM can be registered subject to limitations and conditions (eg

disclaimers). Thus, if a trade mark has been limited to specific colours, it will not be
an infringement to use the trade mark in colours which are clearly different.

2. If your use of the TM is question is on goods/services which are to be exported,

then your use in SA for that purpose, is not an infringement.

s34(2)(g) use of any identical or confusingly or deceptively similar trade mark

which is registered (concurrent registration)
If you have a registered TM which turns out is the same/similar to the plaintiff’s
registered TM, you can raise your registration as a defence when the plaintiff cries
infringement. Your defence is one of honest concurrent use.

The defence only holds if the use is in the form in which the mark is registered and
for the period during which your TM is registered. The defendant will argue that he is
merely using his right the to trade in terms of the registered trade mark.

Note: It is possible to have concurrent registrations – ie different proprietors each

with basically the same registered TM for the same goods/services but it is not
common. See s 14! Depending on the facts, it is possible that a court could stay the
infringement proceedings to allow the defendant to apply for registration in terms of s
14 – and if it is successful, then obviously the use of the now registered mark would
be allowed under s34(2)(g).

DEFENCES:
The defences which could be raised are:
a. Denial of Infringement
b. Counterclaim for rectification or removal of the trademark on the basis that the
registration is invalid
c. Saving of Vested Rights s3659
d. Estoppel, Acquiescence
c. The s34(2) grounds

59 Prior Use s36(1) see previous lecture note and the TMA – nb section!
Proprietor of a registered tm cannot prevent the use or object to the registration by any person of an
identical or similar mark where that mark has been used continuously from a date prior to the date of
first use or registration of his mark. Aim is to protect vested rights in unregistered tms; is only
available to proprietor of unregistered tm who started using it before the date of registration of
registered tm. Where the proprietor of the registered tm has also used the mark prior to registration,
the proprietor of the unreg mark may have to prove he used it first.

CML4504S 2022 TONG

 55

PART G PROTECTION OF S 35 WELL-KNOWN TRADE MARKS

The purpose of this provision is to afford protection to the foreign proprietor of a

trade mark which is well known in South Africa in terms of South Africa’s obligations
under the Paris Convention.
Read: Truworths Ltd v Primark Holdings (989/2017) [2018] ZASCA 108; 2019 (1) SA
179 (SCA) (5 September 2018); McDonald’s

What is required to get protection under s 35?

1. a national of or domiciled or established in a Convention country

The purpose of the section is to afford protection to the foreign proprietor of a trade
mark which is well known in South Africa in terms of South Africa’s obligations under
the Paris Convention. This requirement ensures that the scope of protection is not
extended to nationals of non-Convention countries which would not grant similar
protection to South African nationals.

McDonald’s: ‘it would be enough for a plaintiff to prove that the mark is well known as
a mark which has its origin in some foreign country, provided that as a fact the
proprietor of the mark is a person falling within sub-section (1)(a) or (b). (15D)

Does protection extend to SA nationals?

According to Blue Lion v National Brands (2005 (1) SA 346 (T) at 351 the answer is
“No!”.
“The Trade Marks Act is a South African Act, it stands to reason that South Africans and
South African companies can claim rights arising from common law and the relevant statute.
I do not see any valid logical reason why a South African Act can elicit protection for its own
nationals from a foreign convention. It stands to reason that foreign companies need to
qualify as convention countries to be entitled to claim protection under the Paris Convention.
I am therefore not persuaded that the first respondent is entitled or qualified to claim the
protection under the Paris Convention. I find that s 27(5) is not applicable in this case and
therefore not available for the applicant to use as a defence” (at 351)

2. mark is well known in the Republic

See McDonald’s Corporation; AM Moolla Group Ltd and Others v The Gap,
Truworths Ltd v Primark Holdings (989/2017) [2018] ZASCA 108; 2019 (1) SA 179
(SCA) (5 September 2018)

What does ‘well known’ mean?

(a) Must the mark be well known to all sectors of the population? See s 35(1A)
(b) Whatever the relevant sector of the population may be, what degree of awareness
within that sector is required before a mark can properly be described as well known?

See earlier references to this in s 34(1)(c).

CML4504S 2022 TONG

 56

3. a reproduction, imitation or translation of the well-known mark

The reference to reproduction, imitation or translation seems to imply that there has
been copying of the trade mark.

Note that the mark must have been well-known at the time the second user adopted
the mark.

Example: Person X in Italy has the trade mark GORP-Italia for clothes which is
famous around the world. X does not trade in SA. A South African registers GORP-
Italia for clothes under the TMA and proceeds to use this trade mark in their clothing
business. If X wants to enter the SA market, it will find that the mark is already being
used for clothing.
To make use of the s 35 protection60 X needs to show that GORP-Italia was well-
known in SA as the mark of X BEFORE the South African trader started to use the
mark. In other words, X must show that at the time the South African appropriated
the mark, local consumers already knew of GORP-Italia in SA as the mark of X
(even though X was not trading here).
HOWEVER, if X cannot show this, then s 35 cannot help.

Read: AM Moolla Group Ltd and Others v The Gap (2005) 6 SA 568 SCA – to get to
grips with this!61
“To conclude: A local mark, validly appropriated, cannot lose its value or protection simply
because someone else’s reputation overtakes its business. Although the marks in contention
may at first blush appear to be imitations or reproductions of the respondents’ marks, the
crucial point is that when any reproduction or imitation took place, it was not of a ‘well-
known’ mark but of a mark not well known within this country. As we have seen, there is and
never has been anything wrong with the reproduction or imitation of a mark that is not well
known. Salt of the Earth was the first proprietor of these marks in South Africa and became
the proprietor at a stage when the respondents’ marks were not yet well known.”

AND NOTE that s 36(2) vests the rights of those who made bona fide use of the
mark prior to this provision coming into effect (31 August 1991) – You must review s
36 – make sure that you understand its effect!

4. use in relation to goods or services which are identical or similar to his

goods or services
Unlike s34(1) the reference is not to use that is unauthorised or in course of trade.

5. use likely to cause deception or confusion

The same principles discussed above in s 34(1) would apply here.

60
(for example to apply to remove the mark under s 10(6))
61 Can you think of any examples in SA?

CML4504S 2022 TONG

 57

S 36 VESTED RIGHTS

Section s36 vests rights in two instances – review this section on your own. It is
IMPORTANT – and it will come up again when we do passing off.

What is the purpose of vesting rights under s 36?

When do rights vest under s 36?

Can you give an example of each?

See further Extraction v Tyrecor SCA 2015

/end/

CML4504S 2022 TONG