QUESTION 1- (10 MARKS)

Randy is a South African manufacturer of cosmetic products, which she markets under the trademark REVIVE. Randy has also
registered REVIVE as a trademark under the Trademarks Act in respect of cosmetic products. The REVIVE range of cosmetics
proves extremely popular and well-known in South Africa due to the reputation REVIVE has acquired over the years as a
proven, safe, reliable and effective product for the revival of ageing and sun-damaged skin.
In 2019, Luyanda starts ‘manufacturing’ her own range of cosmetic products in competition with Randy. Luyanda’s products
are marketed under the trademark REVITALIZE and in a similar packaging to that used by Randy.
Randy also discovers that Luyanda has also applied to the South African registrar of Trademarks to register REVITALIZE as her
trademark in respect of cosmetic products Randy approaches you for legal advice.
With reference to the Trademarks Act, provide Randy with legal advice as to how she can deal with Luyanda’s actions. Refer to
relevant legal principles and provisions, and to case law, in support of your position. For ease of marking, please ensure that
the different aspects of your answer, as your understanding of the facts and law may determine, are clearly identified and
demarcated (10)

1.1. Infringement Through Unauthorized Use of a Mark that is Identical or Similar to a registered Mark IN RESPECT
OF SAME GOODS: Section 34(1)(a) - Maximum of 5 Marks

1.2. Opposition to Registration - Maximum of 5 Marks

ANSWER – 1.1:
STEP 1: Identification of Section 34(1)(a) as the applicable law (1 mark)
Randy should be advised that Section 34(1)(a) of the Trade Marks Act is applicable in this scenario. This section deals with the
unauthorized use of a mark that is identical or similar to a registered mark in respect of the same goods.

STEP 2: How infringement may occur:

Randy needs to understand that infringement occurs when there is unauthorized use of a mark (Revitalise) that is similar to her
registered mark (REVIVE), and both are used in respect of cosmetic products.
How infringement may occur: unauthorised use of a mark that is similar or identical to a registered mark in respect of
goods/services that are identical to goods/services in respect of which a mark is registered (1 mark)

STEP 3: Discretionary Marks - Application of law to facts, analysis, and conclusion (1 - 3 marks)
• Analyzing the facts, it's evident that Luyanda did not have authorization to use "Revitalise" for cosmetic products, especially
considering the similarities in pronunciation, descriptive message, and packaging.
• Citing the relevant case law (e.g., Plascon-Evans) could strengthen the argument for confusion.
• The potential remedy for Randy would be to seek an interdict and damages.

ANSWER – 1.2:
STEP 1: Identification of Section 21 & Grounds under Section 10:
Randy should be advised to consider Section 21 of the Trade Marks Act for opposing Luyanda's application for registration. In
terms of section 21 of the Trademarks Act, Randy may oppose Luyanda’s application for registration (1 mark).
Grounds for opposition under Section 10 should be considered, particularly 10(12) (inherently deceptive or likely to deceive)
and 10(14) (confusingly similar to another registered mark). She may rely on the following grounds provided for under section
10 of the Act: Opposition to registration on the basis that a mark is inherently deceptive or its use would be likely to deceive or
cause confusion or contra bonos mores and 10(12) (1 mark) - is confusingly similar to another previously registered mark
10(14) (1 mark)

STEP 2: Discretionary Marks - Application of law to facts, analysis, and conclusion: 1 - 2 marks
Examining the facts, it's clear that "Revitalise" is deceptive and likely to cause confusion, especially given its similarity to
Randy's registered mark "REVIVE."
Concluding that Randy has a strong case for opposing Luyanda's application for registration.

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

QUESTION 3:

Company XYZ is the registered holder (“proprietor”) of the well known Michelin trade mark which is inter alia registered in
South Africa as a trade mark in respect of tyres. PRS (Pty) Ltd manufactures and sells tyres in South Africa under the trade
mark Tekky-Tyres.

An advertisement brochure of PRS reads inter alia: “Tekky-Tyres gives you the same quality and toughness as Michelin tyres at
a fraction of the price!”

Explain whether this advertisement infringes the rights in the registered trade mark Michelin in terms of section 34(1)(a) and
section 34(1)(c) respectively of the Trade Marks Act 194 of 1993. (You must not discuss the common law on passing off/
assimilation)

You must also contrast the judgments in Abbott Laboratories v UAP Crop Care (Pty) Ltd [1999] 1 All SA 502 (C) and Verimark
(Pty) Ltd v BMW AG [2007] SCA 53 (RSA) with one another. [10]

ANSWER

Step 1: Section 34(1)(a) - Likelihood of Confusion

1. Identification of Elements:

• Unauthorized use of the Michelin trademark.

• Use in the course of trade by PRS.

• Use in respect of the same goods for which Michelin is registered.

• Use of an identical mark for comparison in the advertisement.

2. Comparison with Abbott Laboratories v UAP Crop Care (Pty) Ltd [1999] 1 All SA 502 (C):
 • In Abbott, the court held that likelihood of deception or confusion is not necessary if the marks are
identical.

• Michelin is not used by PRS as its own trademark.

3. Comparison with Verimark (Pty) Ltd v BMW AG [2007] SCA 53 (RSA):

• Verimark held that Section 34(1)(a) requires use as a trademark by the defendant.

• However, Verimark did not specifically address competitive advertising.

4. Application to the Facts:

• Applying the Verimark approach, PRS may not infringe as it doesn't use Michelin as its own trademark.

• The use is comparative, not as a trademark.

Step 2: Section 34(1)(c) - Well-Known Trademark

1. Identification of Elements:

• Michelin is a well-known registered trademark in RSA.

• PRS's use is in the course of trade.

2. Comparison with McDonald’s Case:

• McDonald’s case establishes that a trademark is well-known if known to a substantial number of

persons interested in the product.

3. Comparison with Verimark (Pty) Ltd v BMW AG [2007] SCA 53 (RSA):

• SCA held that use as a trademark is not a requirement for Section 34(1)(c).

4. Additional Requirements:

• Company XYZ needs to prove an unfair advantage or detriment to the reputation of the Michelin
trademark.

• This could be challenging to establish, as seen in cases like "Laugh It Off" and Verimark.

Step 3: Overall Assessment

1. Likelihood of Success:

• Under Section 34(1)(a), Company XYZ may face challenges due to the comparative nature of the
advertisement.

• Under Section 34(1)(c), proving unfair advantage or detriment is a difficult requirement.

2. Legal Strategy:
 • Company XYZ should consider focusing on establishing the uniqueness and reputation of the
Michelin trademark to meet the criteria of Section 34(1)(c).

• However, it should be acknowledged that this might be a challenging task.

This comprehensive approach takes into account the legal elements, relevant case law, and potential challenges in
establishing infringement under both Section 34(1)(a) and Section 34(1)(c) of the Trade Marks Act.

QUESTION 4:

DaimlerChrysler Aktiengesellschaft (called “DCA” hereafter), a corporate body, is the manufacturer of the well-
known Mercedes-Benz vehicles. DCA is also the registered proprietor (holder) of the registered trade mark
Mercedes-Benz in South Africa.

This trade mark is registered in class 12 as a goods mark in respect of motor vehicles. MB Auto Tech CC is a close
corporation which conducts a business in Pretoria in relation to the servicing, maintenance and repair of motor
vehicles under the name and style of Mercedes-Benz Auto Tech. No ties, contracts or licences of any nature exist
between DCA and the close corporation concerned.

Explain whether the unauthorised use of the name Mercedes-Benz Auto Tech by the close corporation infringes the
registered trade mark of DCA in terms of section 34(1) of the Trade Marks Act 194 of 1993.

Indicate clearly, with the necessary substantiation, whether infringement in terms of section 34(1)(a) and/or 34(1)(b)
and /or 34(1)(c) is applicable, or not. [10]

ANSWER

Not an infringement ito s 34(1)(a) (1) Goods/services are not identical (1) Is infringement of s 34(1)(b) (1) Goods (cars) and
services (service and repair of cars0 similar goods or services (1) CC is using Mecedes-Benz Auto Tech without permission in the
course of Trade as a business name although perhaps not as a trade mark (for services) (1) Use, especially in view of the inherent
distinctiveness of Mercedes-Benz mark likely to deceive or confuse (1) Also infringement of s 34(1) (c) (1) Mercedes-Benz is a
registered well-known trademark in SA – McDonald’s case (1) Use of similar mark iro any service will dilute distinctive character
of reg TM or create unfair advantage for infringer (1)

QUESTION 5:

Laffitoff Productions produce a T-shirt with a design as depicted in the accompanying illustration with the caption of
the well-known trade mark reading “Black Neighbour” instead of “Black Label”.
Does this constitute an infringement of the “Black Label”’ trade mark? Probable advantage as a consequence of the
use “gained by the unatuorised use or probable prejudice to the distinctive nature or reputation of the trade mark –
Laugh it off case. S34(1)(c) explicitly provides that confusion or deception is not required Despite the fact that the
existence of a competitive-relationship is not essential the use by the defendant/respondent must still be in the
course of trade Well-known: Triomed the court held that “well-known” in s 34(1)(c) should be interpreted in the
same way as in s 35 5) Indicate briefly what is meant by the “use” of a trade mark. (5)

QUESTION 6:

Company XYZ has used the registered trade mark Suddywonder since 2000 for washing-powder after registering
that mark in South Africa as a trade mark in the same year. The trade mark as been registered in respect of soap and
washing-powder in Class 3.

By the end of 2003 Suddywonder was already one of the three most popular washing-powders in South Africa.

(a) P is the holder of the trade mark Spiff which he uses in South Africa in respect of washingpowder. In
February 2004 P placed advertisements in the press stating inter alia : “Spiff beats Suddywonder time and
again!” Explain whether this conduct of P has infringed the trade mark of Company XYZ in terms of section
34(1)(a) of the Trade Marks Act 194 of 1993. (6)

(b) In October 2004 R applies for the registration of Suddiwunder as a trade mark for inexpensive digital cameras
in Class 9. Will Company XYZ be successful in opposing this application for registration of Suddiwunder, in
terms of section 10 of the Trade Marks Act 194 of 1993? Substantiate your answer fully. (6)

(c) S, a local wholesale dealer, imports large quantities of Suddywonder washing-powder from Namibia and is
selling it in South Africa at a lower price than that of Company XYZ. The imported washing-powder is
manufactured in Namibia by T, a licensee of Company XYZ. Explain whether the importation by S constitutes
an infringement of the registered trade mark of Company XYZ. (2)

QUESTION 7:

In the case of Laugh It Off Promotions CC v South African Brewerie International (Finance) BV t/a Sabmark
International 2006 (1) SA 144 (CC), the court had to consider, among other issues, the infringement of a trademarks
with regard to the right to freedom of expression in section 16 of the Constitution, 1996.

Analyse the court’s decision on the relationship between intellectual property rights and the Constitution, 1996,
with reference to anti-dilution protection in terms of section 34(1)(c) of the Trade Marks Act 194 of 1993 and the
right to freedom of expression.