THE REACH OF THE TRADE MARKS ACT – WIM ALBERTS
Trade mark protection is often seen as being absolute in its scope, but there are certain limitations that a proprietor will encounter when he wishes to enforce his rights. Most pertinent is the fact that trade marks are registered in relation to specific classes of goods or services. To be more specific, there are currently 45 classes, 34 dealing with goods, and 11 with services, in which a mark can be registered. The following examples can be used. Class 5, for instance, deals with pharmaceutical products, class 12 with motor vehicles, class 28 with sport equipment, and class 33 with wine. Another limiting factor is that the marks concerned must be confusingly similar. How does the Trade Marks Act 193 of 1994 deal with these issues? What can a trade mark registration do and not do? Firstly, section 34(1)(a) of the Act provides protection against the use of a mark in relation to the class in which a mark was registered. The use must be in the same class. The owner of a mark for construction services in class 37 can thus not act against the use of the mark in relation to insurance services in class 36.
As mentioned, the mark concerned must be identical to, or so nearly resembling the registered mark as to be likely to lead to deception or confusion. It is well-established that a comparison of marks can be done on three bases. There is, firstly, a visual, secondly, a phonetical, and, thirdly, a conceptual test that could be applied. It was also accepted that a finding of confusing similarity on any of these grounds would suffice for infringement. In the last few years, European decisions which place a different emphasis have been followed in South African Law. In these decisions it was held, in particular, that the likelihood of confusion must be "appreciated globally". In the case of, for instance, marks that are visually similar, but have a distinct conceptual difference, a global appreciation could lead to the conclusion that the marks are not similar. If there is use of a confusingly similar mark, in relation to products in the same class, the potential infringer is not entitled to establish that there will not in fact be confusion in the market. There is in effect an irrebuttable presumption of confusion, having regard to the two factors mentioned.
Secondly, in terms of section 34(1)(b), protection is obtained also in relation to similar goods or services, but here it is possible to escape liability by establishing that there will not in fact be confusion. The question raised here is of course when products would be similar? Factors mentioned in case law are the respective uses and users of the goods concerned, the physical nature of the goods, the respective trade channels, whether the goods would be on the same shelves, and whether the goods are competitive. It has already been found that clothing, for example, is similar to cosmetic goods (class 25 and 3, respectively). Having regard to modern fashion trends, it may be possible to add to this group jewellry (class 14), and bags (class 18). In the near future cellular phones and portable devices for storing music recordings (both in class 9) could join the list!
Thirdly, in the case of section 34(1)(c), the class in which a product would classify is not directly relevant. This latter section proscribes the use of a registered famous mark, or a mark similar thereto, in relation to any product, if the use is likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the mark, notwithstanding the absence of confusion or deception. The scope of the provision’s protection against dilution was thought to be quite wide, but following the decision of the Constitutional Court in the Laugh It Off decision, it is now required from a proprietor to prove the likelihood of economic harm before relief can be obtained. Although not necessarily decisive, but clearly persuasive, is the likelihood of confusion. Here the classification, or rather nature of the goods, will, indirectly, be relevant. It stands to reason that there is a greater chance of proving that VOLKSWAGEN motor vehicles and VOLKSWAGEN sail boats will be confused, than ALFA-ROMEO vehicles and ALFA-ROMEO spaghetti. For that matter, would anyone assume a link between ARMANI clothing and ARMANI pesticide? It thus seems that the relationship between products is still relevant, although the scope of protection, theoretically, is much wider than is the case with section 34(1)(b).
Further limitations to the enforcement of a registration is that there may be another person that has established prior rights through the use of a mark, and the registered proprietor cannot then rely on the statutory infringement remedy to prevent such a person from continuing with his use, if it is bona fide, and meets the other requirements of the Act. It is also necessary to realise, and flowing from the previous statement, that a registration provides, in the final analysis, protection with a relative scope. The perception exists that once a mark is registered, the proprietor is immune from any challenge. The truth is of course that a registration can be challenged even years after it has been obtained. A registration is thus not a panacea for, by way of example, underlying disputes as to proprietorship of the mark. It is also possible to limit the scope of a registration so that it is made clear that the registration does not provide exclusive rights to the use of a particular word.
The above discussion referred to certain limitations relating to the enforcement of a trade mark. However, it is important, in order to maintain a balanced view on the matter, to understand that a trade mark registration remains the most effective method of protecting a valuable trade mark. In the great majority of cases, the infringement provisions of the Act will ensure that the mark closely linked to the business’ identity, is indeed protected. That a trade mark registration can do.