Case Comments: Trade-mark Protection and Freedom of Expression

• Jurisdiction: South Africa
• Date: 16 August 2019
• Citation: (2006) 18 SA Merc LJ 355
• Published date: 16 August 2019
• Pages: 355-367
• Author: BR Rutherford

355

Case Comments

Trade-mark Protection and Freedom of

Expression

BR RUTHERFORD

University of South Africa

1 Introduction

Trade marks are names, designs, logos, or other signs or symbols used to

market products. A trader uses his trade mark in relation to his goods or services to

identify and distinguish them from similar products of others (see the def‌i nition

of a ‘trade mark’ in s 2(xxiii) of the Trade Marks Act 194 of 1993). At the same

time, a trade mark enables the consumer to identify the product of a particular

trader and to distinguish it from a range of competing products (Ruth Annand

& Helen Norman Blackstone’s Guide to the Trade Marks Act 1994 (1994) at

9-13; William Cornish & David Llewelyn Intellectual Property: Copyright,

Trade Marks and Allied Rights 5 ed (2003) in pars 15-23-6; WR Cornish &

Jennifer Phillips ‘The Economic Function of Trade Marks: An Analysis with

Special Reference to Developing Countries’ (1982) 13 International Review of

Industrial Property and Copyright Law 41 at 42-3 and 49).

A trade-mark registration confers a limited monopoly on the trade-mark

proprietor. It entitles him to the exclusive use of his trade mark in relation

to the product for which it is registered for the purpose of distinguishing his

product from others. As a corollary, it entitles him to prevent others from using

his trade mark, or a confusingly similar mark, in the course of trade in relation

to the same or similar products (s 34(a) and (b) of the Trade Marks Act). As

Dan Shanahan (‘The Trademark Right: Consumer Protection or Monopoly?’

(1982) 72 The Trademark Reporter 233 at 234) points out, trade-mark law,

by conferring a limited monopoly on the trade-mark proprietor, serves two

complimentary policy objectives – it protects the proprietor’s business interests,

and it protects consumers against deception or confusion in the marketplace.

During the last century, changes in commercial practices (such as new

communication methods, improved manufacturing and distribution, large-

scale retailing, and modern advertising techniques) have led to the so-called

consumer society where trade marks have acquired an increased signif‌i cance

as both distinguishing and advertising signs (Annand & Norman op cit at 13-

4). This development, in turn, has seen an increase in demands by trade-mark

proprietors for greater protection of their trade marks against imitation. Many

of these demands have been acceded to, and trade-mark law now provides

(2006) 18 SA Merc LJ 355

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