The (Positive) Right to Use a Trade Mark: The Kurt Geiger Case

• Jurisdiction: South Africa
• Citation: (2010) 21 Stell LR 479
• Pages: 479-488
• Published date: 16 August 2019
• Date: 16 August 2019

479

THE (POSITIVE) RIGHT TO USE A TRADE

MARK: THE KURT GEIGER CASE

Wim Alberts

B Iur LLB LLM LLD

Professor of Intellectual Property Law, University of Johannesburg

1 Introduction

Friction between stat utory and common law int ellectual proper ty rights

has existed since the advent of stat utory protect ion of intellectual proper ty;

more particularly, the natu re and scope of the relationship bet ween such

rights created by stat ute, and those protect ed by the common law, have

been problematic. This state of affa irs prevails notwit hstanding the fa ct that

legislation at times contain s provisions aimed at delineati ng the relevant set

of norms applicable. For instance, section 41(4) of the Copyright Act 98 of

1978 st ates that no copyright or r ight in the natu re of copyright shall subsist

otherwise tha n by virtue of the Act or some othe r law. Another example is

section 41(3) of the same Act which provides that the Act’s provisions shall not

derogate from any rule of law relating to condential information, per sonality

rights, or unlawf ul competition.1 In Payen Component s SA Limited v Bovic

CC2 it was stated that much of the plaintif f’s evidence is to be found “in the

interstices bet ween copyright and passi ng off.”3 After referring to s ection

41(3), the court said the following:4

“Turning to passing off, it has not been relied upon at all as such. In my opinion a Court should

be wary of allowing the sharp outlines of these two established branches of the law of unlawful

competition, evolved through long experience, to be fudged by allowing a vague penumbra around

the outline. Unlawful competition should not be added as a ragbag and often forlorn nal alternative

to every trade mark, copyright, design or passing off action. In most such cases it is one of the

established categories or nothing.”5

The con uence of statutor y/common law rights is also found in t he Trade

Marks Act 194 of 1993. There is a complex interaction between this st atute

and the common law, specically insofar as use r rights are concerned.6 This

1 Difficult q uestions have a risen in pa rticula r insofar as th ree-dimensional objec ts are concer ned Th e

question is oft en whether common law prote ction exists where an object is r everse-engineere d and no

specific st atute is applicable See th e well-known decision in S chultz v Butt 1986 3 SA 667 (A), but also

later case law d iscussed by Van Heerden & Nee thling Unlawful Competition 2 ed (2008) 231

2 1995 4 SA 441 (A)

3 453F

4 453G-H

5 Compare also t he case of Blue Lion Manufact uring (Pty) Limited v Nat ional Brands Limited 2001 3 SA

884 (SCA) where the cour t referred to Payen Compon ents SA Limited v Bovic CC 1995 4 SA 441 (A)

The former st ated (886J-887A) that the latte r dealt with “the i llegitimacy of usi ng some general notio n of

unlawfu l competition to creat e an ersatz passing of f with requirement s (in the alternat ive) less exacting

than those re quired by the com mon law”

6 See Albert s The Relevan ce of Prior Use in Trade Ma rk Confli cts LLD thesis U NISA (2005) for a

comparative s tudy of this issue for a nu mber of countrie s

(2010) 21 Stell LR 479

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