Question 2:

Q 2.1 - James has recently registered his line of energy drinks under the trade mark “VitalEnergi” in class 32. He
approaches you to explain the significance of trade mark registration under the Trade Mark Act 194 of 1993 and its
implications for any unauthorised use

Answer 2.1:

• Once a trade mark has been registered, it is protected, and its owner/proprietor is entitled to prohibit others from using it
in the course of trade.
• The right conferred upon trade mark registration is an exclusive right to the use of the registered trade mark - to affix it on
goods, containers, packaging, labels, etc. or to use it in any other way in relation to the goods for which it is registered.
• Section 38: Extends to granting a licence to another party to use the trade mark in return for payment. o Discuss the
different types of licensing agreements.
• The rights acquired by registration shall be infringed by virtue of unauthorised use as determined by section 34

Q 2.2: James recently discovered that another South African company, WaveChill (Pty) Ltd, has started producing a
line of beverages called "VitaBoost”. James is concerned that WaveChill's use of "VitaBoost" may infringe on his
registered trade mark.

Advise James on issues of trade mark infringement liability. Examine and implement the relevant provisions of the
Trade mark Act 194 of 1993. Discuss the likelihood of his trade mark infringement claim succeeding and the
available remedies.

Answer 2.2:
STEP 1- IDENTIFICATION OF SECTION 34(1)(A) AS THE APPLICABLE LAW.
Reasoning: WaveChill’s goods (VitaBoost – energy drink) fall in an identical class of goods, namely class 32.
Why infringement may occur: unauthorised use of a mark that is similar or identical to a registered mark regarding
goods/services that are identical to goods/services in respect of which a mark is registered.

STEP 2 - Application: TEST FOR DECEPTION OR CONFUSION:

1. Are the classes of goods or services confusingly similar?
Mention it need not be tested by virtue of section 34(1)(a).

2. Are the marks identical or similar?

Plascon Evans case: consideration of the similarities and differences between the two conflicting marks in terms of sense,
sound, and appearance.
Yes, VitalEnergi vs VitaBoost are virtually identical (or strong argument for similarity).

3. Perform global assessment/appreciation.

Yuppiechef/Mettenheimer: Look at the impact on the average consumer.
Both are in the beverage/energy drinks sector.
Likelihood of confusion.

STEP 3 - CONCLUSION:
Value judgement: Yes, confusion is likely due to the nature of the goods.
Likely to succeed in their infringement claim.
Remedies: section 34(3) Interdict/damages etc