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Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Ownership of a trademark is established on a first-to-use basis. Registration is not mandatory to establish rights. Owners of unregistered trademarks may rely on common law rights, acquired through use, to challenge later applications for registration. In South Africa, first-to-use is generally superior to first-to-file; however, it is easier for owners to enforce registered trademarks than their common law equivalent, as trademark registration is prima facie proof of national ownership and validity.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

Unregistered trademarks are protected under the common law. The delict of unlawful competition is derived from the common law and deals with many matters in trademark law. The general remedy under unlawful competition is to compensate a party for damage caused by another’s intentionally wrongful act. This includes the act of passing off, where a trader misrepresents its business or product as that of or associated with that of another, resulting in a reasonable likelihood of confusion among the public. The proprietary right protected in a passing-off action is the reputation of a mark, get-up or trade dress, which forms part of the goodwill of the business or product. 

Section 35 of the Trademarks Act affords protection to well-known marks under the Paris Convention. It allows for infringement actions against the use of well-known and unregistered trademarks. Provision is also made for opposition in similar circumstances under Section 10(6). Well-known marks are afforded protection regardless of whether the party claiming entitlement to the well-known mark carries on business or has any goodwill in South Africa.

How are rights in unregistered marks established?

Marks may be used in South Africa without registration. Where such use is sufficiently extensive that a reputation is created and the public associates the mark with the party using it as a single source (ie, where the mark is distinctive of the business or product), common law rights may be acquired. This reputation must extend to a substantial portion of the public, comprising clients or potential clients in the area of trade concerned. For reputation to exist, it must form part of the goodwill in a business; goodwill has no independent existence apart from the business or commercial activity to which it is attached.

Are any special rights and protections afforded to owners of well-known and famous marks?

Yes.

Section 34(1)(c) of the Trademarks Act contains the anti-dilution provision and applies to well-known registered marks. Owners of well-known registered trademarks are entitled to prevent the use – in the course of trade – and registration of marks in South Africa which are identical or similar, in relation to any products or services. Use of infringing marks would likely take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered mark, notwithstanding the absence of confusion or deception. This provision is aimed at preventing infringers from trading off the goodwill attached to well-known marks to promote their own products and services and, in so doing, recognises the marks’ selling powers and advertising functions.

Under Sections 35 and 10(6) of the Trademarks Act, protection is afforded to well-known marks under the Paris Convention, which need not be registered. Owners of well-known marks are entitled to prevent the use and registration in South Africa of marks that:

  • constitute, in whole or in essential part, a reproduction, imitation or translation of a well-known mark; and
  • are used for identical or similar products or services to those of the well-known mark, where this use is likely to cause confusion or deception. 

Owners of well-known marks must be nationals of South Africa or have their domicile or real and effective industrial or commercial establishments in a convention country, regardless of whether they carry on business or have any goodwill in South Africa. A trademark is well known if it is well known to a substantial number of persons who are interested in the services or products.

There is no separate register for well-known and famous marks.

To what extent are foreign trademark registrations recognised in your jurisdiction?

The principle of territoriality applies in South Africa. Foreign trademarks that are not registered in South Africa are recognised only insofar as they qualify as well-known marks under the Trademarks Act and are protected under the common law.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

Registered trademarks are prima facie evidence of ownership and validity in South Africa. Owners obtain the exclusive right to use their trademarks in relation to the specifications of products and services. ‘Registered Trademark’ or other suitable symbols can be used to indicate ownership of marks. This acts as a deterrent to potential infringers as owners can bring infringement actions in a particular court and claim for damages or reasonable royalties. Owners can also oppose subsequent applications and apply for cancellation of conflicting registrations. Enforcement of unregistered trademarks is more challenging and costly than enforcement of registered trademarks. Registered marks are afforded further protection under the Counterfeit Products Act, as owners can apply to seize and destroy counterfeit products. Registration is attractive to licensees as it provides the opportunity to generate royalties, thus operating as a financial tool. Registered marks may be used as security for debt finance.

Who may register trademarks?

Any individual, firm, partnership or body corporate may apply for registration, provided that it uses or has a bona fide intention to use the trademark. However, a person may apply for the registration of a trademark if he or she does not use or propose to use the trademark, provided that a body corporate is due to be established. Once established, ownership will transfer to the true owner (ie, the body corporate). In this case, the application must be accompanied by an affidavit confirming the procedure and the intention to assign. The trademark can be registered only once assigned to the body corporate and application is made to record the assignment. 

What marks are registrable (including any non-traditional marks)?

To qualify for registration, trademarks must be capable of distinguishing the products or services of a party under those for which they are registered or proposed to be registered from the products or services of others, either generally or – where the trademark is registered or proposed to be registered subject to limitations – in relation to use within those limitations. This criterion is satisfied if, at the date of application, the trademark is capable of distinguishing either inherently or as a result of prior use. 

Trademarks must be capable of graphic representation and include a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for products or any combination of the aforementioned. Colours, three-dimensional shapes and configurations, sounds and motions are registrable, provided that they are distinctive and capable of graphic representation. As there are practical and inherent hurdles to registering scent and taste marks (eg, graphic representation) and the marks resulting from the nature of these products, they are unlikely to qualify for registration.

Service marks may be registered and include the sale or offering for sale of products in the retail or wholesale trades.

Can a mark acquire distinctiveness through use?

Yes. In order to acquire distinctiveness, a mark must have been used as a trademark and not as a generic name for the products or services. Where a mark is highly descriptive or laudatory, no amount of prior use will render it distinctive. Evidence of use in South Africa, normally submitted on affidavit, must be shown when establishing acquired distinctiveness and any evidence submitted, must originate from before the date of filing the application. Foreign use and registration is of little value.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

The following may not be registered (absolute grounds) or, if so registered, are likely to be removed from the register:

  • marks that cannot be represented graphically and are not capable of distinguishing the products or services of a party from the products or services of another;
  • marks that consist exclusively of signs or indications which may serve in commerce to designate:
    • the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the products or services; or
    • the mode or time of production of the products or rendering of the services;
  • marks that consist exclusively of signs or indications which have become customary in the language or bona fide and established practices of the trade;
  • marks that consist exclusively of shapes, configurations, colours or patterns of products where such shapes, configurations, colours or patterns:
    • are required to obtain a specific technical result;
    • result from the nature of the products; or
    • are likely to limit the development of any art or industry if registered;
  • marks that are inherently deceptive or the use of which would likely:
    • deceive or cause confusion;
    • be contrary to law or morality; or
    • offend any class of persons;
  • marks that consist of names, flags or symbols of states, nations, regions or international organisations; or
  • marks for which the applicant has:
    • no bona fide intention to use as a trademark – either itself or through any authorised party; or
    • no bona fide claim to ownership.

Relative grounds for refusal are:

  • marks that on the filing or priority date constitute, in whole or in essential part, a reproduction, imitation or translation of a trademark protected as a well-known mark under the Paris Convention;
  • marks that are identical or similar to another’s registered mark for identical or similar products or services, and are thereby likely to deceive or cause confusion;
  • marks that are identical or similar to a prior application and for which registration is sought in relation to identical or similar products or services, and are thereby likely to deceive or cause confusion; and
  • marks that are identical or similar to a well-known registered mark in South Africa.

Are collective and certification marks registrable? If so, under what conditions?

Yes. Collective marks may be registered, including in the name of an association. Collective marks must be capable of distinguishing, in the course of trade, products or services of members of the association applying for or owning the registration of that mark from the products or services of non-members of the association. On application for the registration of a collective mark, the rules governing use of the mark must be filed. These rules must specify:

  • the persons authorised to use the mark;
  • the conditions of membership in the association owning the mark; and
  • if applicable, the conditions of use of the mark, as well as penalties for misuse.

Geographical names and other indications of geographical origin may be registered as collective marks.

Certification marks may be registered if they are capable of distinguishing, in the course of trade, products or services certified by any party from products or services not so certified, in respect of:

  • the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the products or services; or
  • the mode or time of the production of the products or the rendering of the services. 

Certification marks may not be registered in the name of a party which carries on a trade in the products or services for which registration is applied. The applicant must file a statement that it does not carry on a trade in the products or services for which registration is sought. The rules governing use of the mark must also be filed, which specify:

  • the conditions for use of the mark; and
  • the circumstances in which the owner will certify the products or services.

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