Merchandise Marks

When South Africa hosted the FIFA World Cup in 2010 there was a buzz of excitement, and many areas of the hospitality trade benefitted from the thousands of fans and visitors that ‘invaded’ the country.

Unfortunately, the football, cricket and rugby ‘World Cup’ events are not public property, and the economic spin-offs for hotels, transport carriers, food and merchandise vendors are carefully controlled by the organising bodies.

The Merchandise Marks Act 1941 assists the ‘owners’ of these events in a substantial way. It has provisions for declaring certain logos, brands and slogans as ‘prohibited’ marks,1 and for declaring events as ‘protected’.2

A. Prohibited marks

Marks declared by the Minister of Trade, Industry and Competition to be ‘prohibited’ include:

The prohibition22 will be either an absolute one, or conditionally, and can be in connection with any trade, business, occupation or event, or in connection with a trade mark or trade description applied to goods. It is a criminal offence to contravene any such prohibition or, to fail to comply with any such condition.

B. Prohibited emblems

  1. It is an offence to use23 a mark which consists of or contains the national flag of a country which is a member of the international conventions for the protection of intellectual property.24 25

  2. It is an offence to use a mark which consists of or contains the armorial bearings (that is, the coat of arms) or any other state emblem of the Republic, or a convention country, without authorisation from the competent authority of that country.26

  3. It is also an offence to use a mark incorporating the flag, armorial bearings or any other emblem, or the name (or its abbreviation) of any international organisation, without its authority.27

  4. Any person who, in connection with his business, trade, profession or occupation, uses any device, emblem, title or words in a way that is likely to indicate that it is carried on under the patronage of the president, or any state department or provincial government, commits an offence unless he has written authority.28

  5. The same applies if the marking etc. indicates that you are employed by, or supply goods to, the president, state fepartment or provincial government.

C. Protected events

A number of events, have, since this provision was inserted into the Act in 2002, been declared protected events. They include the 2010 World Cup, the 2009 British and Irish Lions tour and the 2013 African Cup of Nations. The purpose is to protect the investment made by various food, drink and merchandise vendors who pay the organisers for the right to set up shop and capitalise on the custom and trade brought in by the spectators to the events. The buzz-word, to describe the practice of non-licensed vendors who try and coat-tail on these benefits of the event, is ‘ambush marketing’.

  1. It is a criminal offence to use29 any kind of mark (including a trade mark, name, brand, or logo) during the period for which an event is protected, in a manner likely to achieve publicity for that mark and thereby derive promotional benefit from the event, without the prior authority of the organiser.
  1. Section 15. 

  2. Section 15A. 

  3. This means a visual representation or illustration. 

  4. GN 3172 of 14 December 1951. 

  5. GN R 1805 of 22 November 1963. 

  6. GN R 899 of 30 May 1974. 

  7. GN 448 of 19 July 1974 and 2240 of 5 October 1979. 

  8. GN R 1240 of 7 August 1959 and R 914 of 26 May 1972. 

  9. GN R 1446 of 17 August 1973. 

  10. GN R 654 of 19 December 1947. 

  11. GN 578 of 23 March 1979 and other Government Notices. 

  12. GN R 563 of 12 August 1977. 

  13. GN 1151 of 1997 except for the bona fide use of the mark for indicating geographical position. 

  14. GN 24 of 1998. 

  15. GN 891 of 2002. 

  16. GN 798 of 10 September 2010. 

  17. GN 690 of 5 July 2013. 

  18. GN 988 of 4 October 2013. 

  19. GN 704 2010 published on 12 July 2010. 

  20. GN 733 of 12 July 2013. 

  21. GN 799 of 10 September 2010. 

  22. Section 15. 

  23. In connection with any trade, business, occupation or event. 

  24. See the list of so-called ‘convention countries’

  25. Section 14(1A). 

  26. Section 14(1B). 

  27. Section 14(1D). 

  28. Section 14 (2). 

  29. This means visually or audibly.