The timeous enforcement of trade mark rights : notes

• DOI: 10.10520/EJC173466
• Pages: 172-181
• Date: 01 January 2015
• Author: R.W. Alberts
• Published date: 01 January 2015

172

Aantekeninge/Notes

The timeous enforcement of trade mark rights

1Introduction

Ideally, a trade mark proprietor should take steps to enjoin infringing use

as soon as possible after a third party commences use of a registered

trade mark, such use amounting to infringement. The reality of

commerce is, of course, that this does not always happen. Sometimes the

proprietor might simply not be aware of the infringement. At other times

the third party’s use could be perceived not to be prejudicial at first, due

to, inter alia, geographical considerations, the size of the operation, the

nature of the goods produced or services rendered etc. The result could

be that court proceedings are only instituted a number of years after use

first began (but always on the assumption of course that the third party’s

use postdates the registration date of the proprietor’s mark). By way of

example, in Turbek Trading CC v A & D Spitz Ltd 2009 (SCA) 158, a claim

was considered on the merits despite a delay of six years (par 15). One

question that needs answering here is what the legal consequences are

when there is a delay before a trade mark right is enforced. Another, in

what circumstances the delay can constitute a defence, and the various

defences that could feature (waiver and consent are not dealt with here

– see Sonnekus The Law of Estoppel in South Africa (2012) 161). These

issues are discussed below (see also Alberts ‘Check who's using your

trade mark: The need for the timely enforcement of trade-mark rights’

2007 Juta's Business Law 32).

2 Relevant Situations

2 1 Honest Concurrent Use (HCU)

Does a period of undisturbed use benefit the third party t rade mark user

mentioned above in a registration context? One scenario that can occur

is that an application will be refused by the Registrar of Trade Marks,

based on a conflict with a prior registered mark (s 10(14) of the Trade

Marks Act 194 of 1993). Unless this citation is removed, the application

will not proceed to registration. However, the Register may withdraw the

citation in the event of HCU having taken place and “register” the mark

(s 14(1)). The general factors which should be considered in HCU matters

were set out in the British decision of Pirie’s Application 1933 RPC 147.

These include contingencies of confusion, whether the choice of the

mark was honestly made, the nature of the trades of the respective

parties, actual confusion, and, importantly, the duration of use (159 line

How to cite: Alberts ‘The timeous enforcement of trade mark rights’ 2015 De Jure 172-181

http://dx.doi.org/10.17159/2225-7160/2015/v48n1a10