Interrogating trade mark protection for ‘similar’ goods or services: A case for alternatives?
| Published date | 24 May 2019 |
| Author | Job, C. |
| Pages | 92-107 |
| Date | 24 May 2019 |
GOODS OR SERVICES: A CASE FOR
Honorary Profess or, Centre for Intellectual Propert y Law, University of Pretoria
Senior Consultan t, Adams & Adams
registration and use sit uations) in relation to ‘similar’ goods or ser vices. In
particular, s 10(14) provides that a trade mark is unreg istrable if it is identical
to a prior registered t rade mark or so similar to it that its use in relation to t he
goods or services for which regist ration is sought and which are the same as or
similar to the regist ered goods or services, would be likely to deceive or cause
confusion. Section 34(1)(b) is the counterpart t o s 10(14) and stig matises as
infringeme nt the use of an identical or similar trade mar k to a registered trade
mark in relation to goods or ser vices which are so simila r to the registered
goods or services th at, in use, there exists t he likelihood of deception or
confusion.
This was seen1 and welcomed at the time a s considerably broadening the
scope of protection for registered t rade marks compared w ith the equivalent
2 This is, in
fact, only part ially correct and only i n relation to infri ngement. Prior to its
amendment in 1971,3 s 17(1) of the 1963 Act prohibited registration of a trade
mark which so nearly resembled a register ed trade mark as to b e likely to
deceive or cause confusion but only in relat ion to the same goods as those
for which the trade mark was reg istered or ‘goods of the same description’.
The infri ngement provisions of the 1963 Act, s 44(1), limited protection of
a registered tra de mark to the goods ‘in respe ct of which the trade mark is
registered’. Initially, therefore, the protection under the 1963 Act relating both
to use and registrat ion was limited, esse ntially, to the same goods or serv ices
African A ssociation of Intelle ctual Prope rty Law and In formation Technology L aw Teachers and
Researchers A ssociation (AIPLITL) hoste d by the University of Preto ria on 4 July 2018.
1 Personal knowled ge and see, for example, Adams & Ada ms Practitioners gu ide to intellectual
property l aw (2011) 171 para 9.1.3.
92
(2018) IPLJ 92
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when compared with the u namended 1963 Act.
However, perhaps it is not always appreciated that, after the 1971 amendment
of the 1963 Act, the scope of s 17(1) (although not of s 44(1)) was considerably
broadened and released f rom reference to any particular ty pe or class of goods
or services. It provided:
‘17(1) Subject to t he provisions of sub-section (2), no trade ma rk shall be registered if it so
resembles a tra de mark belonging t o a different proprietor and al ready on the register that
the use of both such t rade marks in relation t o goods or services in r espect of which they are
sought to be regis tered, and register ed, would be likely to deceive or cau se confusion.’
Thus, registrat ion of a late r, res embling trade mark wa s prohibited in relation
to any goods or services provide d that use of that mark was likely to give rise
to deception or confu sion in relation to a registered tr ade mark and its goods
or services. The tes t under the amended s 17(1), in c omparing the respe ctive
the goods or services wer e the same or similar but only whet her deception or
confusion, viewed overall, was li kely. In this sense, therefore, the 1993 Act
actually dim inished the scope of the proh ibition against registrat ion of later
competing trad e marks by requiring that the r espective goods or services must
be the same or similar t o each other. The 1971 amendment to s 17(1) came
about as a result of the introduct ion into the 1963 Act of t rade mark protection
for service marks.4 Its wording, i nter alia, envisaged the possibility of a ‘goods
I revert to this issue lat er.
Another insta nce under the 1963 Act of the scope of protection for registered
trade marks bei ng capable of extension to dissimilar good s is found in the
provisions of s 53 which allowed registration of defensive trade marks in t he
following terms:
‘Defensive registr ation of well-known marks
53(1) Where the registrar is of opi nion that, by reason of the extent of use or of a ny other
circumst ances, a trade mark reg istered in part A of the regi ster would, if used in relation t o
goods or serv ices other than th e goods or service s in respect of which it is reg istered, be li kely
goods or serv ices and the proprietor of th e registered trade ma rk, then, notwiths tanding that
goods or serv ices and notwit hstanding a nything i n section 36 contai ned, the tra de mark
may, on application by the prop rietor in the pr escribed ma nner and on paym ent of the fee
a defensive trade ma rk, and such a trade mark , while so registered, shal l not be liable to be
taken off the reg ister under section 36 in r espect of those goods or ser vices.’
Similarity bet ween the registered good s and those for which defensive
protection was sought was thus not a re quirement of s 53. The two fundamental
requirements of the sect ion were that the trade ma rk had to be well-known
Sout h African Law of Trade Marks 4 ed (1997) Se rvice Issue 2017
1-10.
OR SERVICES: A CASE FOR ALTERNATIVES? 93
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