Some Comments on the Infringement of Registered Trade Marks by Advertisement of Goods on the Internet

• Published date: 16 August 2019
• Author: Bernard SC Martin
• Date: 16 August 2019
• Citation: (2013) IPLJ 25
• Pages: 25-41

25

SOME COMMENTS ON THE

INFRINGEMENT OF REGISTERED

TRADE MARKS BY ADVERTISEMENT

OF GOODS ON THE INTERNET

BernarD sc MartI n

*

Associate Professo r, Department of Mercantile Law, Univers ity of the Western Cape

1. IntrODuctIOn

Ubiquity, that most desired char acteristic among advertiser s, is the promise of

the internet. T hat promise has made the inte rnet just about the most popular

platform for advertising goods a nd services. The int ernet’s almost limitless

reach has mounted a ser ious challenge to what appeared to be a bed rock

principle of trade mark: the vene rable territorial pr inciple. The Supreme

Court of Appeal (SCA) reinforced the principle fairly r ecently by nding, in

Gallo Africa Ltd & Others v Sting Mu sic (Pty) Ltd & Others,1 that intellectual

property (I P) is immovable.

One of the most challenging problems raise d by trade mark use is

determin ing when an internet or t elevision advertisement which emanate s

from a jurisdict ion in which the trademar ked goods are present, and which is

perceived in a jurisdict ion in which those goods a re not found, constitutes use

of the trade mark in t he jurisdiction in which the a dvertisement is perceived.

The difculty stems from the territoria l existence of both the rights to, as

well as the trade mark s themselves: the replica trade mark p erceived in an

advertisement refers to one t rade mark while the replica on the goods refers to

another trade m ark.2

Internet adver tising is only one form of advertising, and advert ising is only

one of three modes of trade ma rk use.3 Advertising use of trade marks via the

* BA LLB (UKZ N) LLD (UWC). My thanks go to Pr ofessor Solly Leeman and the anony mous

referees. Respo nsibility for all er rors is mine.

1 2010 (6) SA 329 (SCA).

2 The entit y which I have called a replica tra de mark, or replica, is a mat erial representat ion of a

trade mark : a specimen of the symbol which wa s used to constitute a tr ade mark, displayed in

situations i n which it indicates the t rade origin of the good s or services in relatio n to which it is

situated.

3 F K Beier ‘The doct rine of exhaustion in E EC trademark law – scope a nd limits’ (1979) 10 IIC

23 divides the exclusi ve right to use a trade ma rk into three pri nciple aspects or ‘sub-r ights’: (a)

the right to af fix it to goods (which he calls th e basic right); (b) the ‘right of br inging the trade

marked goods i nto commerce’; and (c) the right to us e the trade mar k on business papers and

in adverti sing. These sub-right s convert into three mo des of use: affixation of th e trademark to

goods, placeme nt of the goods on the ma rket and advert isement of tra demarked goods . Affixat ion

consists of physical ly applying a replica to go ods or situating on e in relation to a corp oreal entity

connected t o the goods. Trademarked go ods are placed on the mar ket by a person offering to or

actually c onducting tra de in the goods. Bently & Sh erman Intellect ual Property L aw 3 ed (2009)

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(2013) IPLJ 25

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internet can on ly be seen in proper perspe ctive against the background of a

broader examinat ion of trade mark u se by advertiseme nt.

My present comments provide a persp ective on internet tr ade mark

advertising and sug gest one mechanism for determining when a t rade mark is

used in situations such a s that described in the second parag raph above, using

the following scheme. First, the circum stances in which an adver tisement

constitutes tr ade mark use are considered . The forms of advertising, med ia

and non-media, are then d iscussed, indicati ng how the question of which

trade mark is use d arises in relation to media advertising. Two types of media

advertisement are identied, i ntra-jurisdictional and tra ns-jurisdictional,

followed by a theoretical analysis of the question of which trade ma rk is used,

in relation to each of them. South Af rican case law on trans -jurisdictional

advertising is then exa mined, but the dear th of case law on internet

advertising necessit ates an examination of some compar ative materials. The

international p erspective on trans -border internet adver tising is punctuat ed

by two excursuses: one into South Af rican law concerni ng contractual offers

and invitations to t reat, and another into constr uctive delivery. The arguments

advanced lead to the conclusions that i nternet advertisements of tradem arked

goods which are not in the jur isdiction in which the advertis ement is perceived,

only constitute use of the t rade mark in that jur isdiction when the advert iser

offers to sell the goods in the ju risdiction.

2. traDe Mark use In aDvertIseMent

An advertiseme nt of trademarked goods is, for present pu rposes, a visual,

auditory or combined visu al and auditory commu nication that draws public

attention to the avail ability of the goods.4

The appearance of a ‘tr ade mark’ in an advert isement does not

automatically mean the t rade mark is used,5 as Verimark (Pt y) Ltd v BMW

AG (hereafter Verimark v BMW)6 shows. BMW sued for in fringement of

its ‘car mark’ and ‘polish mark’ which are registere d trade marks. BMW

alleged that the television and packagi ng advertisements of Verimark’s

Diamond Guard car polish , infringed its rights. BMW’s logo, the symbol that

919 indicate that ther e are four types of use relev ant to infringeme nt, but in my submission, ( b)

offering or exp osing goods for sale, and (c) imp orting or exporti ng the goods, in their sche me,

both fall with in the ambit of placing the go ods on the market in te rms of my scheme.

4 An advertiseme nt is defined as ‘A paid anno uncement as of good s for sale …; the action of

making gene rally known; a calling t o the attention of the public’: available at h ttp ://d ict ion ary.

reference.com/browse/advertisement. English online de scribes newsp apers, magaz ines and

direct mai l as the main print, and t elevision and the inter net as the main electron ic, advertising

media (see http://www.english-online.at/media /advertising/advertising-media.htm. Tra de marks

are prima rily ocular in n ature as shown by th e definition of use i n s 2(2)(a), but similar pri nciples

apply to audibly com municated adver tisements: s 2(2)(c).

5 Use of a trade mark is an essenti al element of infr ingement (all thre e subsections of s 34

require ‘un authorised us e’). A trade mark is use d by producing what ar e called replicas of

it. The term re plica was chosen bec ause the entity o n the Trade Mark Regist er is called the

official repr esentation of a tr ade mark, which i s an incorpor eal. Replica avoids spea king of a

represent ation of the official repr esentation.

6 2007 (6) SA 263 (SCA).

26 South African Intellectual Property Law Journal (2013) 1

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