Trade mark enforcement

Enforcement means taking steps to protect your trade mark — actually, to protect your business. Let’s say you manufacture stationery cases. Your brand name is MASTERCLASS and you sell your products through all retail outlets which stock stationery: CNA, Exclusive Books, Makro, Waltons, PNA, specialist stores, and supermarkets. You advertise widely, and people all know your brand.

A competitor starts selling stationery cases under the brand name TEACHER’S PET. You might lose business because of this competition — but not because people will buy his product mistakenly thinking that it is your product, or that it comes from the same manufacturer as your MASTERCLASS cases. Why should they?

However, what about stationery cases which appear on the shelves with the brand MASTER’S CLASS? You would get pretty upset, right? There is a good chance that customers might not notice the difference, or might think it is just a variant of your brand which they have always bought. Here, you would lose a sale because of the confusingly similar brand.

This is when we talk about trade mark infringement — in other words, your trade mark rights have been infringed or breached. The Trade Marks Act says you can get an interdict (a court order) against infringement, and you can also recover damages, or a royalty. (We discuss these remedies in Remedies against infringement.)

What about stationery cases which appear on the shelves with the brand MASTERWRITE — or FASTERCLASS? It is not so clear, is it?

We will shortly focus on the guidelines that courts apply to determine whether one trade mark is an infringement of another’s rights. Right now, let’s look at the three different types of trade mark infringement.

Trade mark infringement relates to registered rights in terms of the Trade Marks Act — we also refer to ‘statutory infringement’. If the trade mark is a common-law trade mark, we must consider ‘passing off’. See Passing off.

Primary infringement

Keep in mind that you have registered your trade mark for certain goods (or services) which you have specified. Primary infringement is where someone uses a trade mark in relation to the same goods (or services) specified in your registration, and their mark is the same as yours, or is confusingly similar. The word infringe comes from the Latin words in (meaning into) and frangere (meaning to break).

To prove infringement, you must establish that:

• He (the defendant) uses a trade mark; and
• It is identical to the registered mark, or is one which is so similar as to be likely to deceive or cause confusion;
• His use is in the course of trade;
• This use is in relation to any of the goods or services which are specified in the registration; and
• He does this without your permission, as the registered proprietor.

Read section 34(1)(a) of the Trade Marks Act.

The question in most trade mark infringement cases is whether the marks are similar.

There is a difference between ‘likely to deceive’ and ‘likely to cause confusion’. If you are deceived, you are completely misled and do not realise any difference. A con-man, scammer or fraudster deceives people. If you are confused, you might realise there are differences in the two brand names, but because they are so close you think there is a connection — or you are uncertain, and so believe that there could be a connection.

To keep things simple, we will just talk about confusing similarity.

There are no clear answers to the question of whether two marks are confusingly similar. It is a value judgment which depends on many factors. In the end, the judge who has to decide must try and visualise the marketplace in which the products are sold, and stand in the shoes of the (imaginary) customer about to buy the defendant’s product or use the services. What would be going through that customer’s mind?

In this imaginary shopping moment, the judge must take everything into account about this likely transaction. For example:

• Do the trade marks sound the same?
• Do they have the same meaning?
• Do they look the same?
• Are the products sold only in a specialised setting — for instance, a high-powered pharmaceutical medicine on prescription (and where doctors and pharmacists know the differences)?
• What if the products are only available online?
• Are they expensive, so more care will be taken than normal?

Here are some examples from recent cases.

Secondary infringement

I use the term secondary to distinguish primary infringement from what we are going to discuss now. It is not really called that.

In secondary infringement, the defendant’s mark is on a product that is not one of the goods (or services) specified in the registered trade mark, but a similar kind of product or service.

The issues to be proven are that:

• He (the defendant) uses a trade mark; and
• It is identical or similar to the registered trade mark;
• In the course of trade;
• In relation to goods (or services) which are so similar to those in the registered specification;
• That in his use there exists the likelihood of confusion; and
• He does this without the permission of the registered proprietor.

Read section 34(1)(b) of the Trade Marks Act.

This is quite tricky. In a nutshell, you have to show not just that the defendant’s mark is similar to your registered mark, but also that his goods (or services) are similar to any of your registered goods or services; and, that when you put these two aspects together, they produce a likelihood of confusion.

Therefore, both legs of the enquiry have to be satisfied. It could be that the defendant’s mark is identical, but his goods are quite different. Say, for example, the registered goods are ‘stationery cases’ but the defendant uses MASTERCLASS for a television reality programme on cage-fighting. No infringement. Sometimes, however, the question of whether goods (or services) are the same is a difficult one.

The Court determines this similarity by applying the following guidelines, as a sort of box-ticking exercise:

• What does the consumer use the goods or services for?
• Who buys them?
• How are the goods made and from what?
• What is the route to market of the goods? In other words, what are the respective trade channels through which both types of goods pass to get to the consumer?

In a fairly recent case, it was decided that wine grapes and wine are not goods of a similar description. So, the defendant’s use of the trade mark ZONQUASDRIF on wine grapes did not infringe the registration of ZONQUASDRIFT for wine. What do you think?

Infringement by dilution

Let’s recap:

• Primary infringement is where the defendant uses a confusingly similar mark on goods or services that are the same as the goods or services which you have registered.
• Secondary infringement is where the defendant uses a confusingly similar mark on goods or services that are similar to any goods or services which you have registered.

The third type of statutory infringement is where the defendant uses the offending trade mark on any goods or services. It does not matter what goods or services are specified in the registration, nor whether there is any likelihood of confusion.

However, what does matter are the following:

• The registered trade mark must be well known; and
• The use by the defendant of its trade mark must take unfair advantage of the reputation or character of the registered trade mark; or
• The defendant’s use must be detrimental (harmful, damaging) to the reputation or character of the registered trade mark.

Read section 34(1)(c) of the Trade Marks Act.

This section of the Act is generally referred to as the dilution provision. It is designed to give protection against the ‘dilution’ of trade mark rights. We could use the example of our MASTERCLASS trade mark, registered for stationery cases, and now someone comes along with the TV show MASTERCLASS.

The idea of this form of protection was developed in 1927, when an American trade mark lawyer Frank Schechter suggested that if one allowed Rolls-Royce restaurants, Rolls-Royce cafeterias, Rolls-Royce pants and Rolls-Royce candy, the Rolls-Royce mark would no longer exist in ten years’ time.

Showing that the registered trade mark is well known is simple enough, but how does one show that another trade mark will take advantage of that reputation and that it is unfair to do so? For example, we all know that APPLE is a famous brand. However, it is also the name of a fruit which is found everywhere. If I start making guitars and call them APPLE, am I taking advantage of that fame? Is anything unfair about what I am doing? Is it unfair that the producers of the cage-fighting programme should call it MASTERCLASS?

Equally, to show detriment is not straightforward.

South African Breweries, the makers of BLACK LABEL beer, sued Laugh It Off Promotions for trade mark infringement based on dilution. They complained that its T-Shirts with this logo caused detriment to their brand.

The Constitutional Court rejected the claim, saying that since it was obvious that Laugh It Off was just poking fun (in other words, had parodied the brand), South African Breweries needed to present facts to show that their business in beer had been damaged, which had not been established by the evidence.

The outcome in the Laugh It Off case is not a true reflection of the provision protecting against dilution, because the company relied on its Constitutional right to freedom of expression as a defence. As we have seen (in What are ‘rights’?) these Constitutional rights are paramount and can only be limited by clearly established grounds.

There have not been other good examples of cases about dilution in South Africa. In short, a claim based on this provision is not easy.