Legal Articles

In our previous instalment we shared a general overview of what trademarks are, and what they seek to protect. It was noted that a trademark, generally speaking, is a mark (sign, logo, slogan etc) that one or an entity intends to use for the purpose of identifying their goods or services from others.

In other words, it is a sign that identifies certain goods or services that are offered by a particular entity or individual.

In the market, some products or services may be more popular with customers than others of the same kind, thereby rewarding the supplier with higher sales and better reputation than other businesses offering the same products or services. Depending on the market share of the preferred products or services, other players may find it difficult to penetrate into that market. In most cases, this is the main reason why some players in that market may resort to supplying products that are strikingly similar to the preferred products.

Trademark Infringement South Africa

Trademark infringement denotes the unauthorized use of a registered, identical mark or something with similar resemblance, in the course of trade, in a way that is likely to cause confusion or deception.  The infringement of a trademark takes place in three basic ways, as per Section 34 of the Trademarks Act of 1993 (the Act);

• The unauthorized use in the course of trade in relation to goods or services in respect of which the trademark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;
• The unauthorized use of a mark which is identical or similar to the trademark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trademark is registered, that in such use there exists the likelihood of deception or confusion;
• The unauthorized use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trademark registered, if such trademark is well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trademark, notwithstanding the absence of confusion or deception.

The determination of whether there has been an infringement involves a comparison of marks, products and/or services of the parties involved in the dispute. It usually is not sufficient to compare the other elements to the exclusion of the other.

Can You Sue for Trademark Infringement Without Registration?

Where infringement has been established, the owner of the trademark usually sends a letter of demand for the infringing party to desist from further unauthorized use of the mark. The owner of the trademark may also get an interdict for the unauthorized use to cease, claim damages and/or royalties that would have been due had the infringing party sought permission to use the mark in the first place, or the deletion of the mark on the products or services material of the infringing party.

Where deletion of the mark on the products or services material is not possible, delivery of the material to the owner of the trademark may be considered. When determining the amount of damages, the Court may conduct an inquiry as it deems suitable under the circumstances.

Van Deventer & Van Deventer Incorporated – Attorneys in Cape Town and Johannesburg

Our attorneys are able to assist you with the legal procedure pertaining to unauthorized trademark infringement.

Contact us to find out more.

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