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Trade Marks

Brands – referred to legally speaking as trade marks – are the bases upon which most products and services are purchased. They are badges of quality, of origin, of identification, and inform our selection process.

It might come as a surprise to learn that the first trade mark registered in the United Kingdom was for beer – the famous BASS & Red Triangle logo, and that was in 1875; and, that the two contenders for the oldest continuously-used trade marks are also internationally famous beer brands: LOWENBRAU, which claims use since 1383, and STELLA ARTOIS, since 1366.1 However, these dates are well eclipsed by WEIHENSTEPHANER, a brand in use since 1040. Guess what, it’s also a beer.2

According to the authoritative Forbes magazine, the most valuable brand in the world in 2014 (and no doubt the most fruitful to investors), is APPLE. BMW is the most valuable car brand, roaring way ahead of its competitors at 11th overall. NIKE is top of the clothing pile, at 24th overall, whilst last on that beautiful list, in position 100, is ESTEE LAUDER. For those still interested, the most valuable beer brand is BUDWEISER, at 19th slot.3

The most valuable South African brand, in 2013, was MTN. Its brand value was estimated at US$5 172 million, more than double the next most valuable, its competitor VODACOM, at US$2 328 million. The most valuable beer brand, in South Africa, is MILLER GENUINE DRAFT, at 23rd in the overall rankings.4

South Africa had its first trade marks statute in 1916, but the current version is the Trade Marks Act 1993.5 It falls under the authority of the Minister of Trade and Industry, but the Trade Marks registry is managed by the Trade Marks Registrar.6

A. Registration7

  1. It is an offence to make a false representation or statement to the Registrar of Trade Marks in order to deceive him (or anyone in the Trade Marks Office) in the administration of the Act.8

  2. It is an offence to make a false representation or statement (to anyone), while knowing it is false, for the purpose of procuring or influencing the doing (or non-doing) of anything in relation to the Act, and any matter under the Act.9

  3. Any person who makes a false entry, or causes a false entry to be made in the Trade Marks Register, commits an offence.10

  4. Any person who causes a false entry to be made in the Register commits an offence.

  5. If you forge something, pretending that it is a copy of an entry in the Register, you commit an offence.11

  6. It is also an offence if you produce, or tender in evidence any such false entry, or forged document, knowing it to be false.12

B. Other prohibited conduct

  1. If you represent, in any way, that a mark or brand is registered,13 when it is not, you commit a criminal offence.1415

  2. It follows that, if you represent that a trade mark is registered, say, to cover particular goods and services, but it is registered for other goods or services, that is also an offence.1617

  3. It is possible that trademarks are registered subject to certain limitations – for example, that it may not be used on certain products.18 It is an offence to represent that it is registered otherwise.19

  1. There is, indeed, a well-known comment by an English judge deciding whether the brand STONE ALE used on two competing beers was likely to lead to confusion. ‘Thirsty folk want beer, not explanations’ – per Lord Macnaghten in Montgomery v Thompson AC 225 (1891). 

  2. www.schwimmerlegal.com, s.v. The Trademark Blog – ‘Some of the Oldest Trade Marks in the World’. 

  3. www.forbes.com/powerful-brands/list

  4. www.statista.com/statistics/270698/most-valuable-south-african-brands

  5. As amended; the latest amendments effected by Act 28 of 2013. 

  6. The offices of the Registrar of Trade Marks are at The Dti campus (Block F – Entfutfukweni), 77 Meintjies Street, Sunnyside, Pretoria (tel: 0861 843 384, fax no: 0861 843 888) email: Helpdesk@cipc.co.za, website: www.cipc.co.za

  7. It is a common misunderstanding that a trade mark does not exist until it is registered; and that a trade mark may not be used until it is registered. These perceptions are wrong. 

  8. Section 61(a). 

  9. Section 61(b). 

  10. Section 60(a). 

  11. Section 60(b). 

  12. Section 60(c). 

  13. For example, by using the ® sign, or the word ‘regd’. The symbol ’tm’ is not the same. 

  14. NB. Filing an application for registration does not mean the mark is registered. This only happens when the Registrar of Trade Marks grants the registration, and issues the certificate of registration. 

  15. Section 62(1)(a). 

  16. Trade marks are registered in different ‘classes’ according to the goods, or services, of interest to the owner. 

  17. Section 62(1)(c). 

  18. For a hypothetical example – that a well-known soft drink brand is not to be used on a toxic product. 

  19. Section 61(1)(b) and (d).