The promotional use of a trade mark: Its potential to have significance

• Date: 24 May 2019
• Author: Alberts, W.
• Published date: 24 May 2019
• Pages: 1-15

THE PROMOTIONAL USE OF A

TRADE MARK: ITS POTENTIAL TO

H AV E S I G N I F I C A NC E



Professor of Mercant ile Law, University of Johannesburg

  

Products can be market ed in a number of ways, including through advert ising

and the distribut ion, usually for free, of goods not necessa rily related to the

core goods. A good example of this latter m anner of promoting products

is provided by pharmaceut ical companies, which often dist ribute goods of

a diverse nature to me dical practitioners, such as p ens, towels, soaps and

  

In trade mark law, being concer ned with trade, the q uestion that arises

           

question is traditiona lly considered in a non-use context — th at is, where a



However, importantly, this issue features i n a number of other contexts too

— a fact that is not always recognised . Certain case studies of judgments i n a

number of countries ar e presented below, whereafter a synt hesis is made. The

1 and thereafter t he situation in Austr alia,

Britain and South Af rica is considered.2

  

2.1 Non-use

The issue of promotional use was considered , in particula r, by the European

Court of Justice (ECJ )3 in the leading case of Silberquelle GmbH v Ma selli-

Strickmod e GmbH.4 The matter was an application for the revocation of a

        

 BIur LLB (UFS) LLM LL D (Unisa).

1 The Europea n genesis of the South Afr ican Trade Marks Act 194 of 1993 is know n: C E Webster

and G E Morley South Af rican law of tra de marks 4 ed (1997) Serv ice issue November 2015

1–6. Reliance on Eu ropean (as well as British) author ities is thus not a controversia l approach:

R Kelbrick ‘Geogra phical names: Has Ce ntury Cit y changed the land scape? Centur y City

        SA

Merc LJ 513.

2 The focus is pri marily on statut ory law.

3 Now the Court of Just ice of the European Union (CJ EU).

4 Judgment of 15 January 2009, Case C -495/07 EU:C:2009:10. For a discussion of the case see

  

4 JIPLP 392.

1

(2017) IPLJ 1

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