Analyses: Is Due South the True North? Recent South African interpretations of ‘similar goods’ in the Trade Marks Act

• Jurisdiction: South Africa
• Pages: 60-73
• Date: 25 May 2019
• Citation: (2013) 25 SA Merc LJ 60
• Author: Roshana Kelbrick
• Published date: 25 May 2019

Analyses

IS DUE SOUTH THE TRUE NORTH? RECENT

SOUTH AFRICAN INTERPRETATIONS OF

‘SIMILAR GOODS’ IN THE TRADE MARKS

ACT

ROSHANA KELBRICK

Professor, University of South Africa

Our Trade Marks Act 194 of 1993, in line with developments elsewhere,

widened the scope of protection granted to trade marks, by creating

three forms of trade-mark infringement. The f‌irst, most traditional form

of infringement is where a registered mark is infringed by use of the

identical or confusingly similar mark on the goods for which it is

registered (s 34(1)(a)). The second type of infringement was introduced

by the Act: this covers use of the identical or similar mark on similar

goods, if ‘in such use there exists the likelihood of deception or

confusion’ (s 34(1)(b)). This resulted in the introduction of the concept

of ‘similar goods or services’ to South African trade-mark jurisprudence.

The third, also novel, type of infringement covers use of the same or

similar mark on any (usually dissimilar) marks, if the mark is well-

known and use of the mark by another takes unfair advantage of, or is

detrimental to, the distinctive character or repute of the mark

(s 34(1)(c)) (infringement by dilution). Section 10 of the Act, on bars to

the registration of trade marks, contains corresponding provisions. As a

result, the Act contains two instances in which similarity must be

determined. First, in respect of all three forms of infringement, if the

marks are not identical, are they similar? And secondly, only relevant for

section 34(1)(b) infringement purposes, are the goods or services

similar? (For the sake of brevity, I shall refer only to ‘similar goods’

unless a service mark is in issue.)

In the past twenty years since the Act was promulgated, there was only

one reported decision on the meaning of the term ‘similar goods’. Then,

like buses, two arrived almost simultaneously. Have they clarif‌ied our

understanding of the term any further?

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(2013) 25 SA Merc LJ 60

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