Do the recent UK trade mark amendments apply to South Africa?
11 Feb 2019
Certain amendments to the UK Trade Marks Act 1994 and their Trade Mark Rules 2008 came into effect on 14 January 2019. These changes implement the EU Trade Mark Directive 2015 in the UK. In other words these changes have been made and are now effective, in all EU countries.
These amendments (or any other amendment made), however, do not apply to South Africa – although our Trade Marks Act, when passed into law, was based on the UK Trade Marks White Paper which lead to the granting of their Act. Even ignoring the principle of territoriality, the simple reason for this situation is of course that UK law does not apply to South Africa.
South Africa, in order to introduce the above provisions, would have to amend its Trade Marks Act on an independent basis and by way of its own parliamentary process.
South Africa, with its much smaller commercial and industrial economy, realistically does not appear to need such a provision in its Trade Marks Act.
In the event that such a situation would arise, the trade mark proprietor would no doubt approach the publisher of that publication and request a correction or deletion of the incorrect entry, if that was possible, or alternatively a deletion in the next edition. Such an approach would, it is submitted, generally elicit a positive response from the publisher if the entry was made incorrectly.
However, in the absence or refusal of such a positive response from the publisher, the challenging question is what action could the trade mark proprietor take in South Africa? In the event that the trade mark in question is a well-known registered trade mark, it would appear that the proprietor could successfully use the infringement provisions of section 34(1)(c) of the Trade Marks Act. The reason for this is that such use by the publisher of the registered trade mark would be likely to be detrimental to the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception.
The position is not so clear in the event that the trade mark in question is not a well-known registered trade mark, because the goods or services in respect of which the trade mark is registered will in most cases differ from the goods of the publisher, being dictionaries and published works. Hence trade mark infringement in terms of section 34(1) (a) or (b) of the Trade Marks Act would not apply in these circumstances.
However, it would appear in the above scenario that the trade mark proprietor could rely on its common law rights to approach the High Court for an interdict against the publisher on the basis of a delict. In such a case, the proprietor would have to show the Court that a) it has rights namely a reputation in its trade mark through use in South Africa, as part of its goodwill; and that b) the publisher has committed an act in respect of the proprietor’s trade mark and hence its business; and that c) such act is likely to damage the trade mark and business of the trade mark proprietor.
Finally, as mentioned, even though such publishing errors are rare, one situation has occurred in South Africa. During, or about, the early part of this century, a publication had wrongly included a relatively well-known trade mark/term in its text in a descriptive manner relating to specific goods – and without an indication that the term was a trade mark. The trade mark proprietor had become aware of this error, and had approached the publisher who responded positively to that approach and agreed that it would delete the incorrect entry in its next edition. The subsequent edition was published a few years after the erroneous edition, and the incorrect entry was duly deleted from the subsequent edition – to the satisfaction of the trade mark proprietor, and without the need for any litigation.
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