Defences to infringement
Introduction
If you are threatened with an infringement claim, there are various things to think about:
- Are you committed to the brand name?
- If you definitely want to keep it, you will need to devise a defence strategy.
- On the other hand, it may be cheaper and more convenient to rebrand. In most cases, the trade mark owner who is threatening you will agree to a phase-out period, and the circumstances and conditions can be negotiated.
It generally takes several months to get a court interdict. The trade mark owner will know that it is better to agree to a reasonable phase-out period, which provides a certain outcome. If the proprietor refuses, he will have to take you to court. That can take several months — and the outcome is never certain with litigation.
It is highly advisable to get expert advice if you are sued for trade mark infringement.
Three categories of defensive measures are available. They are listed below in no particular order.
Contest the prerequisites
Keep in mind that the claimant has the onus on the requirements. (See Primary infringement and Secondary infringement.) You can argue, for example, that the trade mark you use is not confusingly similar to the registered trade mark. It might also be that the only point of similarity is a feature that the trade mark owner has disclaimed.
Statutory defences
The Trade Marks Act provides seven statutory defences; and many of them depend on good faith — what lawyers call bona fides. In other words, you do not have an ulterior motive.
You do not infringe the registered rights in a trade mark in the following instances:
- You make bona fide use of your own name, or your registered company name, or the name of your place of business. For example, if your name is Les Paul, and you advertise that you repair musical instruments, including guitars.
- You give a bona fide description of things like the purpose of the goods, their qualities, their geographical origin and so forth. Let’s say you are a craft brewer based in Buitenkant Street, Cape Town. Would it be in order to put on your bottles a legend saying ‘brewed overlooking the Castle’?
- In good faith you use a trade mark for things like spare parts. For example, if you import car parts, you may advertise ‘windscreens for BMW cars’.
- Your goods are parallel imports — in other words, you import the genuine product from another country, even though your competitor might have the distribution rights for South Africa.
- The registered trade mark is a container or shape (or similar), and in good faith you use any utilitarian features embodied in the registration. A utilitarian feature is something that can be used — like the handle of a jug.
- If there are endorsements to the registration which limit its effect, and your use is within those limitations. For example, if the registration is limited to Gauteng and your sales are restricted to Western Cape Province.
- If you have registered the trade mark you are using.
Read section 34(2) of the Trade Marks Act.
Counter-application
The third type of defence is really a counter-attack. Here, the defendant brings an application to court for the cancellation of the trade mark registration. It follows that if the registration is expunged from the Register, there can be no statutory infringement.
Read section 33 of the Trade Marks Act.
There are three grounds for attacking the validity of a trade mark registration. This process is sometimes called rectification of the Register:
- Non-use — this is discussed in Expungement based on non-use.
- Entry wrongly made — this claim is that the trade mark should not have been registered in the first place. There are several different reasons for this: either because it did not satisfy the minimum requirements for registrability, or because there was a false claim to proprietorship, or because the trade mark clashes with a trade mark in which prior rights exist. The grounds amount to the same grounds as for opposition. (See Opposition.)
- Entry wrongly remaining — this means that the entry is invalid at the time of your application for rectification — it ‘wrongly remains on the Register’. Of course, if an entry was wrongly made in the Register then — unless something quite radical has changed — it would still be ‘wrongly remaining’, but this claim goes a little bit further. For example, the trade mark’s registration could have been valid in the first place. However, the proprietor may have used the mark in a way which is confusing, or allowed other people to use the trade mark in different ways without any control over their use or the quality of the goods they sell. Or, the proprietor may have allowed the mark to become the generic name for the product. In all of these instances, the trade mark no longer serves its purpose of being a badge of single origin — which, if one thinks about it, is what a trade mark really is. Accordingly, it no longer deserves to be registered and enjoy the protection of the statute.
Read section 24(1) of the Trade Marks Act.
Acquiescence
Technically, this is not a defence against statutory infringement but has a bearing on whether the Court will exercise a discretion not to grant an interdict. If the registered trade mark owner has known about your use of the trade mark for a long time and has let you continue without complaining (and so you build up your own reputation and goodwill) the Court may refuse to grant an interdict, because it would be clearly unfair to do so. Worse still, the proprietor might have advised you that they do not object to your use of the trade mark — they are then said to have ‘abandoned’ their rights to bring a claim against you.
It is best to get expert advice on these aspects.