Section 2 of the Trade Marks Act No. 194 of 1993 (“the Act”) defines a mark as “any sign capable of being represented graphically including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned”. A trade mark is defined as a mark used or proposed to be used in relation to goods or services for the purpose of distinguishing those goods or services from the same kind of goods or services from those of others in the trade.
Section 9 provides that a trade mark shall be capable of distinguishing if it is inherently capable of so distinguishing or if it is capable of distinguishing by reason of prior use. In essence, provided that the criteria, as provided for in section 9 of the Act, are met anything than can be seen or represented graphically can be protected as a trade mark.
There are currently numerous words, devices, slogans and/or logos on the Trade Marks Register which indicate that brand owners are aware of their right to protect their most basic form of intellectual property, namely the names and/or logos of their brands. However, brand owners more often than not tend to neglect to protect the features of their brand which the brand owner’s marketing department, marketing agency or employees spend most time, money and effort to develop and promote, and which members of the public ultimately come to associate with the brand, namely the look-and- feel of a product or, in other words, the get-up of a product.
This is rather concerning considering that in the current competitive environment more and more companies in, for example, the United States are protecting the look-and-feel of its products in order to deter competition and third party infringement. For example in a US Decision handed down not so long ago, namely Mixed Chicks LLC, v. Sally Beauty Supply LLC, Mixed Chicks LLC introduced a unique range of hair care products under the trade mark MIXED CHICKS®. The design of the bottles of the MIXED CHICKS® line of products is very unique in that the bottles are translucent, the colour of the content of the products vary depending on the type of product and prominent orange lettering features on the bottles. A much larger competitor, Sally Beauty Products, introduced the exact same range of products under the name MIXED SILK using bottles that were exactly the same shape as the MIXED CHICKS® bottles, carried the same orange lettering and contained product contents of the same colour. The court found that Sally Beauty Products’ conduct amounted to trade mark and trade dress infringement and punitive damages in the amount of USD7.3 million and actual damages in the amount of USD840 000 were awarded to Mixed Chicks LLC.
The get-up of a product generally denotes the form in which the brand owner presents its product to the market and typically includes the labelling and packaging of a product which consist of a number of features such as colour combinations, arrangements, graphics and other design elements. In other words, the get-up of a product is the whole “dress” in which the goods are offered to the public. For example, the decor of the COCA COLA® line of products, namely the distinctive form of the words COCA COLA, the COCA COLA Logo, and the colour red as used in combination with the colour white will constitute the get-up of the COCA COLA® soft drink product.
The definition of a mark and a trade mark is wide enough to include the get-up of a product. Brand owners would typically apply to register their get-up in the form of a nude label. A nude label generally consists of the packaging of a product where the trade marks, logos or slogans have been removed and replaced with blank spaces. It must be borne in mind that, in order to be registrable, a nude label must comply with the criteria as provided for in section 9 of the Act.
According to existing authorities in South Africa, in order to enforce the trade mark rights in the get-up of a product, it will most probably be necessary for a brand owner to show that consumers associate the get-up of a product with the brand owner as a result of the brand owner’s extensive use of that get-up. From an enforcement point of view it is, therefore, advisable for brand owners to consider registering the get-up of their products if the get-up is truly inherently distinctive or has acquired distinctiveness by virtue of the brand owner’s extensive use of that get-up. For example, in National Brands Ltd v GM Patel Foods CC, National Brands successfully instituted trade mark infringement and passing-off proceedings against GM Patel Foods’ based not only on its registration for the get-up of the TENNIS biscuit product but also based on its extensive use of the get-up of the TENNIS biscuit product, which dated back to 1911.
Even though it is possible for brand owners to protect and enforce its rights in and to the get-up of its products through other forms of intellectual property protection such as copyright, unlawful competition, passing-off and proceedings before the Advertising Standards Authority of South Africa, a trade mark registration for the get-up of a product, in the form of a nude label, places a brand owner in the best possible position in the event of litigation proceedings.
Not only does a registered trade mark provide a presumption of the validity of a registration and a presumption that the infringer had notice of the brand owner’s rights, but it also gives way to the problem often encountered in, for example, passing-off proceedings where existing authorities have found that, even if the get-up of the respective products are similar, the different names of products are sufficient to distinguish the products and, in effect, exclude the likelihood of confusion amongst consumers.
On the other hand, if trade mark infringement proceedings are instituted based on a trade mark registration for the get-up of a product, the names of the respective products should theoretically not feature and should, in effect, be excluded from consideration as being extraneous matter. In essence, in order to determine if consumer confusion is likely, consideration should only be had to the trade mark registration for the get-up and the get-up of the infringer’s product. The owner of a nude label could, therefore, potentially prevent third parties from using a get-up similar to the registration for the get-up, even if the names of the respective products are different.
There are, therefore, numerous benefits associated with protecting the get-up of a product and recent developments abroad highlight the potential value for brand owners to invest in the get-up of their products. It is, therefore, advisable for brand owners, if and when appropriate, to take steps to ensure that the get-up of their products is protected.