Trade Marks PDF

Preview

Summary

TRADE MARKSI. DEFINITION OF A TRADE MARK-Comes from s2 of Trade Marks Act: a mark used or proposed to be used by a person in relation to goods and services for the purpose of distinguishing goods and services in relation to which the mark is used or proposed to be used from the same kinds of good an...

Description

TRADE MARKS I. DEFINITION OF A TRADE MARK -Comes from s2 of Trade Marks Act: a mark used or proposed to be used by a person in relation to goods and services for the purpose of distinguishing goods and services in relation to which the mark is used or proposed to be used from the same kinds of good and services connected in the course of trade with any other person Elements of the definition  Mark - (defined in s2) = sign capable of graphic representation (including device, name, signature, word, letter, numeral, shape, configuration, colour, pattern, container) -Note: Goods are capable of functioning as a mark.  Used or proposed to be used - in some countries, must be used before you can register it. However, in SA “proposed” shows you just need an intention to use the mark -use (defined in s2)- use of a visual representation of the mark/ the use of such container/the audible reproduction  In relation to goods or services Not just art/graphic design- because then you would use copyright law and not trademark law  For the purpose of distinguishing them from the same kinds of good and services connected in the course of trade with any other person -Beecham v triomed: The function of a trade mark is to indicate the origin of goods or services and to distinguish it from goods sold by others - Glaxo Group (ENGLISH CASE)- trade mark is a badge used to indicate source, and the proprietor holds himself out as responsible for those goods and their quality (origin function) “badge of origin”-guarantee to consumer about the identity of the goods -Canon Kabushiki (ENGLISH CASE)- trade mark is to allow consumer to distinguish one person’s products from products which have another origin (Distinguishing function) Relationship between Trade Marks Act and other law -Common law allows proprietor to enforce rights to trade mark in certain instances prior to registration-eg if requirements of passing off are met once registered, common law rights don’t fall away- so can also bring a common-law action for passing off, or unlawful competition (but Payen Components said unlawful competition is exceptional)

II. REGISTRABLE TRADE MARKS S9 sets out criteria which trademarks have to meet before they can be registered. Read with s10 which bars certain marks from being registered. Section 9  s9(1)- must be capable of distinguishing goods and services of one person in respect of which it is registered or proposed to be registered from goods and services of another person generally or subject to use within limitations  S9(2)- the mark must be capable of distinguishing on the date of application for registration either inherently or because of prior use (This is the two-fold test of registrability-See Beecham) Why is correct registration important? -If the mark is incorrectly registered, it may be expunged (removed) from the register (like in Beecham v Triomed), or rectified on the register (like in Cadbury). Where should the Registrar look to see if the mark is distinctive? -Impex Electrical: It is to the market in South Africa alone that the Registrar must have regard in determining whether a mark is “capable of distinguishing”. -Automotive Network Exchange Trade Mark- just because it is registered in other countries doesn’t mean that a mark is registrable in South Africa Essential elements of s9: 1. Must be capable of distinguishing the goods and services of one person from those of another (Use Beecham, Die Bergkelder, Cadbury) -A mark must have the ability, fitness or capacity to differentiate. This is a factual issue and must be determined from case to case having regard to all the relevant circumstances. -Beecham: the shape does not distinguish Beecham's goods from those sold by others and no customer will regard the shape alone as a guarantee that the product comes from Beecham. Similar to Die Bergkelder (shape of the container may assist in distinguishing but cannot perform the ‘badge of origin’ function) -Cadbury: a mark should distinguish between brands (not just inform the consumer what kind of goods it is) 2. Distinguishes inherently or because of prior use (Use Beecham FIRST) -Under the 1963 (old) Act, a trademark had to be “adapted to distinguish”. -Onus is on applicant to prove it is capable of distinguishing. -Now it is a two-fold test (Beecham):  On the date of application for registration was the mark inherently capable of distinguishing the goods/services of the proprietor from those of another? (use Heublin) - A mark is inherently capable of distinguishing when it can do the job of distinguishing without the need to educate the public that the sign is a trade mark. - Die Bergkelder- scale of distinctiveness= most distinctive forms (invented words and fancy devices) versus least distinctive forms (shape and slogans). the latter lack an inherent capacity to distinguish. -An invented word (like Kodak) is inherently capable of distinguishing, some words are capable of alluding to goods and being distinctive (eg pendaflex), some become

distinctive through use (Mini) and some are descriptive and non-distinctive (eg banana) -Heublin v Golden Fried Chicken: an invented slogan has an inherent adaptability to distinguish and becomes distinctive by use.  If no, is the mark on date of application for registration capable of distinguishing by reason of its use. (Use Cadbury/Estee Lauder) -If a mark has been used prior to the application for registration, one can argue it is inherently distinguishing OR that it has become distinctive through useWATERFORD Trade Mark. - No amount of use will render some marks distinctive if they have no capacity to distinguish (eg a shape, or the word “beautiful”) see for example: Cadbury & Estee Lauder: If a product is descriptive of goods no amount of advertising will render that name capable of distinguishing -Need evidence of use: date trade mark first adopted and used, confirmation of use BEFORE date of application, showing how mark used in trade, show continuous use, turnover figures for past five years, proof of ads, gross advertising expenditure for past five years, intentional use is persuasive, methods of use/licensing 3. Capable of distinguishing generally or subject to use within limitations -May register a trademark subject to conditions eg subject to disclaimer in the registration. (Look at s 15 + Cadbury case) Which marks are not capable of distinguishing? (READ WITH S 10! These are instances not referred to explicitly in s10)  Laudatory epithets -Marks which consist of laudatory terms (eg words like beautiful, first-class) are not normally inherently capable of distinguishing and one is required to prove distinctiveness by use. HOWEVER, see Heublin v Golden Fried Chicken, where a laudatory epithet (“finger lickin’ good”) WAS inherently capable of distinguishing as it was an invented phrase. -If the entire mark is a laudatory epithet, it will probably violate s10. -In Estee Lauder, the court said that a laudatory epithet cannot be made the subject of a trade mark monopoly since it will unduly limit others’ rights to free choice of language -Marvel case- Tindall J refused to register the word “marvel” but said it is not decided that a laudatory word can never acquire the character of distinctiveness. CAN register if you can show that the laudatory epithet has become capable of distinguishing.  Invented words -1963 Act specified invented words could render a trade mark per se distinctive. for 1993 Act, an invented word is inherently capable of distinguishing (Heublin)  Surnames - 1963 Act forbade the registration of a word that was ordinarily a surname unless it was distinctive. -The 1993 Act does not specifically refer to surnames. ordinary surnames are probably prima facie non-distinctive but an applicant may show that a surname is inherently capable of distinguishing (eg because it is uncommon). -If not, prove it is distinctive through use. To show it is distinstive through use, look at: if the name has become identified in the minds of the consuming public with the goods to which it is applied; the characteristics of the surname (common/ unusual;









 

will registration interfere with the freedom of individuals of the same name to embark upon the manufacture of the same goods); class of goods in respect of which the registration is sought (will it be manufactured by a large number of individuals, common use/small class of consumers?)- Ex parte Ruths Accumulators (Cochran) Letters and numerals Both Acts define a mark as including letters or numerals -cannot register letters and numerals by themselves but could register if it was a distinctive monogram, or if it had a secondary meaning - phonetic equivalent of letters is not registrable- Garrett’s Appn (the word “OGEE” was not registrable) -two thousand case: The mark TWO THOUSAND or 2000 was held to be descriptive Colour -Act defines a mark as including colour Heidelberger - colours are normally a simple property of things. But it may be possible that colours or combinations of colours be a sign. -Red Bull GmbH v EUIPO- Red Bull had obtained registration of trade marks which consisted of a blue/silver colour combination. The court found the two registrations to be invalid. -Louboutin– red sole. Court held that while the shape of the product created an outline for the colour, the registration of the mark did not seek to protect that shape but the application of a colour to a specific part of that product, which was not allowed -If a colour is unusual, it may be inherently “capable of distinguishing”-John Wyeth Containers for goods -Both the 1963 and the 1993 Trade Marks Acts include a “container for goods” as a registrable mark. - AW Faber-Castell - “Container” = that which has in it, or holds, that which comprises or encloses; a receptacle; a formed or flexible covering for the package; a shipment of articles, goods or commodities. appears to cover anything used for the packaging and sale of goods. -if the container is distinctive, it can only be registered as a trade mark in respect of the contents and not in respect of the container itself. But, in Stabilo the Court held that the registered mark comprised the goods themselves and not a container for the goods -containers are usually perceived to be functional and decorative and not badges of origin. -Die Bergkelder- just because a shape is unusual it does not automatically denote trade origin. Containers are not usually perceived to be source indicators, so to be a trade mark, it must at least differ ‘significantly from the norm or custom of the sector’ AND the public must perceive the container to be a badge of origin Slogans -slogans are registrable but they should not be merely descriptive/ laudatory -usually not inherently distinguishing, and require proof of their capacity to distinguish through use, but in Heublin, the phrase “It’s Finger Lickin’ Good” was inherently capable of distinguishing since it was invented An individual’s name and likeness -can license your name or image in relation to goods and through use, it will be capable of distinguishing and thereby registrable Shape of goods -The registration of the shape or configuration of goods as a trade mark was introduced in the 1993 Trade Marks Act.

-Lubbe - shape of goods does not in the ordinary course signify trade origin. -Beecham Group plc -while a capricious addition to a mark was not necessary for it to be capable of distinguishing, this did not mean that such an addition could not be an important element in deciding whether a particular mark is capable of distinguishing -Die Bergkelder- The shape must distinguish the shape of the article from other shapes, but also the shape alone must be a guarantee of origin. Cases: Beecham Group plc v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA) Facts: Beecham had a registered trade mark for Augmentin and wanted the court to find that Triomed had infringed the trademark by copying the shape of its tablet. Triomed’s Augmaxcil has the same shape and colour (white) as Augmentin tablets but whereas the name 'Augmentin' is embossed upon the one side of the latter, the Augmaxcil tablets are blank. Triomed in return sought the expungement of Beecham’s marks on a number of grounds (10(1), (2), (5) and (11)). Court held: - A shape falls within the definition of 'mark' in the Act - The function of a trade mark is to indicate the origin of goods or services and to distinguish it from goods sold by others -the test of whether a mark is capable of distinguishing under s 9 is done in two stages: The first is whether the mark, at the date of application for registration, was inherently capable of distinguishing the goods from those of another person. If the answer is no, the next inquiry is whether the mark is presently so capable of distinguishing by reason of its use to date. -NOT capable of distinguishing because the shape of Augmentin does not distinguish Beecham's Tablets from tablets sold by others and no pharmacist will regard the shape alone as a guarantee that the tablet comes from Beecham. There are many pharmaceutical tablets on the market with the identical or substantially identical shape, albeit not necessarily with the same size -Shape was a technical solution: necessary for ease of swallowing, coating and the prevention of crumbling. The fact that other shapes may also attain these results is beside the point. the registration of the mark was contrary to the provisions of s 10(5) (because 10(5) prevents the registration of marks that are technical solutions), and also 10(11) because the registration of the shape is likely to limit the development of the relevant art. -court adopted the same test for ‘well known’ for s34 that is used for s 35 Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd 2000 (2) SA 771 (SCA) Facts: Cadbury applied to rectify the trade marks’ register by having a disclaimer entered against a trade mark registered in the name of Beacon. Beacon had registered a trade mark for the name Liquorice Allsorts. Court held: -question is whether Liquorice Allsorts is the name of the product (a type of confectionery) or whether it is the name of Beacon's product. Dictionary says it is the name of a product. -The sole producer of a product cannot by means of advertising and selling the product under its generic name, render that name capable of distinguishing - Beacon is not entitled to the exclusive use of Liquorice Allsorts because it merely describes the product (s10(2)-describes kind) and doesn’t distinguish Beacon's product from others’ - s15 disclaimers-s 15 contains the phrase “in deciding whether the trade mark . . . shall remain on the register’. the provision is not only concerned with the question whether the trade mark should remain at all on the register but also whether it should remain in its present form.

-court ordered the rectification of the registration of the trade mark by inserting the disclaimer: “The registration of this mark shall also give no right to the exclusive use of the name Liquorice Allsorts, separately and apart from the mark” Die Bergkelder Bpk v Vredendal Koop Wynmakery 2006 (4) SA 275 (SCA) Facts: Bergkelder adopted the Bocksbeutel bottle in the early 1950s, and had it registered. Vredendal also uses a Bocksbeutel bottle - but theirs has a crayfish embossed on the one flat side. Bergkelder sought to interdict the respondent from infringing its registered trade mark for the container (a Bocksbeutel bottle shape) and the respondent sought to have the mark expunged saying it lacks the necessary capability to distinguish Bergkelder’s wines from those of other wine producers. Court held: - Containers are usually perceived to be functional and decorative and not badges of origin. - a container mark must, in order to be able to fulfil a trade mark function, at least differ ‘significantly from the norm or custom of the sector’, and the question remains whether the public would perceive the container to be a badge of origin - can a Bocksbeutel perform a ‘badge of origin’ function enabling it to distinguish the wine of one producer from that of another. No, if the bottles were put next to each other, one would not be able to tell them apart - ‘unspoken and illogical assumption that “use equals distinctiveness”’ and loses sight of the fact that ‘to be really distinctive of a person’s goods [a trade mark] must generally speaking be incapable of application to the goods of anyone else.’ although the shape of the container may assist in distinguishing Bergkelder’s wine, a Bocksbeutel cannot per se perform the ‘badge of origin’ function with other wines in Bocksbeutels on the market. Estee Lauder Cosmetics Ltd v Registrar of Trade Marks 1993 (3) SA 43 (T) Facts: Estee Lauder applied to register the trade mark 'Estee Lauder Beautiful' in terms of the Trade Marks Act 1963 (the OLD Act). The Registrar refused to allow the trade mark to be registered unless a disclaimer (under s18) was entered in the register in respect of the word 'beautiful'. Estee Lauder refused to accept such disclaimer. Court held: -s18: if a trade mark [is] non-distinctive, the Registrar of Trade Marks/the Court may require the applicant to disclaim any right to the exclusive use of any such part of the mark. -was it non-distinctive? It is a well-established principle that a laudatory epithet cannot be made the subject of a trade mark monopoly since it would involve an undue limitation on the rights of others to the free choice of language in describing and advertising their goods -the word 'beautiful' in the appellant's mark is descriptive, non-distinctive and reasonably required for use in the perfumeries trade. It needs a disclaimer even though the mark was registered in the United Kingdom without a disclaimer of the word. Heublin Inc v Golden Fried Chicken (Pty) Ltd 1982 (4) SA 84 (T): Facts: Heublin applied for an order restraining the respondent from using the name "Chicken Licken", alleging that this constituted an infringement of their registered trade mark "It's Finger Lickin' Good". Court held: -A mark may be distinctive in fact; but it does not necessarily follow that it is adapted to distinguish within the meaning of the Act. -“Finger Lickin’ Good” is an invented slogan, therefore, the mark has an inherent adaptability to distinguish and which has become distinctive by use.

-An applicant for expungement must show that the whole trade mark is reasonably required for use in the trade, and can’t break up a trade mark into its constituent parts to show that each of them may be necessary for use in the trade -are they too similar and would confuse people? the first impression is of prime importance. - the manner in which the parties have used the marks is not the determining factor; what is the determining factor is how they can use the marks, provided only it is used in a fair and normal manner. -Deception/Confusion must be shown by proving that a substantial number of people will be confused about general sense, or sound or appearance. the mark is so different in wording and concept, that the likelihood that a substantial number of people would be confused is small. The only words which reasonably resemble each other are "Lickin'" and "Licken". too much importance should not be attached to their presence in both marks. In their respective contexts they do not dominate. Account must be taken of the other words in appellants' mark. no resemblance, whether visual, conceptual or audial, sufficient to be likely to deceive or cause confusion, was established.

III. DISCLAIMERS -Section 15 states that if a trade mark contains matter which is not capable of distinguishing the registrar/the court may require that the proprietor disclaims right to the exclusive use of any portion that he is not entitled to OR that the proprietor shall make any disclaimer the court/registrar may consider necessary to define his rights under the registration -if a trademark contains elements which are non-distinctive/ common to the trade/reasonably required for use in the trade, registrar may call on applicant to disclaim exclusive rights to such elements -s9 says one may register subject to disclaimer -purpose- prevent the registration of a composite mark which will inhibit the use of the di...