Introduction

It is safe to assume that almost everyone in the world knows the name Trump and that Ivanka Trump is the name of US President Donald Trump's eldest daughter. Trademark Lawyer Magazine recently reported that a number of Chinese companies have filed applications with the Beijing Trademark Office to register the trademark IVANKA for a range of products – from alcohol and wallpaper to sanitary pads. As such, the question has arisen as to whether there is any legal provision preventing someone from jumping on the proverbial bandwagon and registering the trademark IVANKA. Since trademark and other IP laws vary from country to country, what may be permissible in one jurisdiction may not be permissible in another. As such, it is important to consider South Africa's position.

Definition of 'trademark'

The Trademarks Act defines a 'trademark' as a mark that is used or proposed to be used by a person in relation to goods or services for the purposes of distinguishing those goods or services from the same or similar goods or services connected in the course of trade with another person. A 'mark' is defined as any sign that is capable of being represented graphically, including a name.

Registration requirements

Although it is permissible under South African law for a name to be used and registered as a trademark, the name sought to be registered must meet additional registration requirements.

Distinctiveness The most important requirement is that the name in question must be distinctive in relation to the goods or services in respect of which its registration is sought. Therefore, in general, common first names will not qualify for registration as trademarks on their own or in the absence of evidence of extensive use through which they have acquired an ability to distinguish.

In countries where English is a recognised official language, such as South Africa, common English names such as John and Jane are generally not considered to be capable of functioning as trademarks. However, in the case of a name such as Ivanka, which is a Hebrew name, the situation may be slightly different, as neither the Hebrew language nor the name Ivanka are common in South Africa. As such, the trademark IVANKA would arguably pass the test for inherent registrability in South Africa and therefore qualify for registration as a trademark.

Consent Section 12 of the Trademarks Act provides that where an application is filed for a trademark which consists of or includes the name or representation of a person, the trademarks registrar may require the applicant to provide the necessary consent. If the registrar were to recognise IVANKA as the name of Ivanka Trump, he or she may therefore require a letter of consent from her, which could pose a stumbling block for any potential South African applicants.

Refusal

In the absence of a prior confusingly similar trademark on the Trademarks Register, an applicant other than Trump herself could also be prevented from registering the trademark IVANKA if the relevant Trademarks Office examiner refused the application because:

  • he or she perceived it to be the name of a famous person; and
  • there was no obvious basis for the applicant to claim proprietorship of the name.

?Opposition

Assuming the Trademarks Office accepts the application, it must then be advertised for opposition purposes, giving interested third parties an opportunity to raise any objections to the mark's registration. This would be the stage at which Trump would be able to attempt to formally assert her rights to the IVANKA trademark.

Without speculating on the prospects of success and in the absence of any other relevant facts or circumstances, in order to successfully oppose applications to register the trademark IVANKA, Trump would likely rely on one or all of the relevant Trademarks Act provisions. In either instance, the burden of proof would be substantial.

First, Section 10(3) of the Trademarks Act prohibits registration of a mark in relation to which the applicant has no bona fide claim to proprietorship. Second, Section 10(7) prohibits the registration of a mark for which the application for registration was made in bad faith. Last, Section 10(6) prohibits the registration of a mark which – on the date of the registration application – constitutes (or of which the essential part constitutes) a reproduction, imitation or translation of a trademark which is:

  • entitled to protection under the Paris Convention for the Protection of Industrial Property as a well-known trademark; and
  • used for goods or services identical or similar to the goods or services in respect of which the trademark is well known and where such use is likely to cause deception or confusion.

Similar considerations would apply to the first two grounds of opposition. In the case of Section 10(3), it is a well-established principle in South African law that an applicant can claim to be the bona fide proprietor of a trademark if he or she has originated, acquired or adopted it and:

  • used it to the extent that it has gained a reputation indicating that the goods or services in relation to which it is used are his or hers; or
  • proposes to use it in relation to such goods or services.

Case law

A number of principles applicable to an assessment of whether a claim to proprietorship is bona fide have been developed by South African case law. One such principle is that a person cannot claim to be the proprietor of a mark where he or she is aware that another person has a better claim to ownership.

Nonetheless, it must also be borne in mind that since trademarks are territorial in nature, the fact that a trademark is registered or used in a foreign country does not in itself constitute a bar to its adoption and registration by another person in South Africa. This could well prove to be a stumbling block for Trump.

Section 10(7) of the Trademarks Act has not frequently been considered by the South African courts, due to the fact that the assessment of whether an application has been made in bad faith is a subjective inquiry and comes down to the motive or intention with which an application is made. However, it is generally understood that it is not permissible to compete maliciously or dishonestly and leading South African trademark experts have submitted that an application is made in bad faith where the applicant's actions would be regarded as contra bonos mores (ie, against good morals) in the particular trade or industry concerned.

As mentioned above, the fact that another party has adopted and used the trademark in question in a foreign country is not generally an indication that an application for the identical or confusingly similar trademark in South Africa is made in bad faith.

Comment

These considerations mean that there is, on the face of it, nothing to prevent a third party from adopting, using and registering the trademark IVANKA in South Africa, even though Trump herself is using and has registered the name elsewhere in the world.

As the wording suggests, Section 10(6) of the Trademarks Act provides protection for trademarks that qualify as well-known trademarks under the Paris Convention for the Protection of Industrial Property. In order to successfully oppose an application on this basis, the opposing party must prove that its trademark is well known in South Africa. In this regard, the existence of a foreign reputation is insufficient and it must be proven that the reputation extends to South Africa. It is unnecessary to show actual use of the well-known trademark in South Africa, and the courts have held that evidence of exposure of a trademark in South Africa as a result of spill-over advertising in television and print media can suffice, as can evidence that South Africans travelling abroad have come into contact with the trademark in question. However, the trademark in question must be well known to a substantial number of persons interested in, or likely consumers of, the goods or services to which the trademark relates.

In light of the above, it is clear that the burden of proof on a party seeking to oppose a trademark on any of the above grounds is substantial. In the case of Trump's situation, much could hinge on whether a sufficient number of consumers in South Africa would regard the trademark IVANKA as being well known in the country. Proving this could be difficult.

For further information please contact Vicky Stilwell at KISCH IP by telephone (+27 11 324 3000) or email (vickys@kisch-ip.com). The KISCH IP website can be accessed at www.kisch-ip.com.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.