The trade mark similarity threshold and function in dilution law: A comparative analysis

• Jurisdiction: South Africa
• Pages: 456-476
• Author: Chris Job
• Citation: (2018) 30 SA Merc LJ 456
• Published date: 20 August 2019
• Date: 20 August 2019

THE TRADE MARK SIMILARITY

THRESHOLD AND FUNCTION IN DILUTION

LAW: A COMPARATIVE ANALYSIS

CHRIS JOB*

Honorary Professor, Centre for IP Law, Department of Private Law,

University of Pretoria and Senior Consultant, Adams & Adams

Abstract

South Africa enjoys explicit legal protection against trade mark

dilution provided by sections10(17) and 34(1)(c) of the Trade

Marks Act 194 of 1993, as is the case in the United States of America

(USA) and the European Union (EU). This is available in all three

jurisdictions for a registered, well-known or famous trade mark,

which is either identical or similar to a later mark of another person

notwithstanding there being no likelihood of deception or

confusion between the marks in use. The Supreme Court of Appeal

has interpreted ‘similar’ as setting a threshold of ‘having a marked

resemblance’ and has applied this elevated test questionably and as

a stand-alone requirement for entry to these anti-dilution sections

without the need to consider their other substantial provisions. In

the USA and the EU, ‘similar’ is given its ordinary meaning, setting

a lower entry threshold than in South Africa. Similarity is also only

one of several criteria considered and applied globally. It is

suggested that the Supreme Court of Appeal has strayed from the

correct approach and that self- or legislative- correction is needed.

I INTRODUCTION

In common with statutory provisions in the United States of America

(USA)

1

and the European Union (EU),

2

the South African Trade Marks

Act

3

contains explicit provisions for preventing dilution of registered

trade marks arising from the registration or use of identical or similar

* BSc (Natal) BProc (UNISA), FSAIIPL.

1

Section 43(c) of the Trade Marks Act of 1946, 15 USC s 1125(c) (the Lanham Act) as

amended by s 2 of the Trademark Dilution Revision Act 2006 (the TDRA).

2

Articles 8(5) and 9(2)(c) of the Regulation (EU) 2017/1001 of the European Parliament

and of the Council of 14 June 2017 (the European Regulation).

3

Trade Marks Act 194 of 1993 (the TMA).

456

(2018) 30 SA Merc LJ 456

© Juta and Company (Pty) Ltd

trade marks.

4

To qualify for dilution protection, registered trade marks

in these jurisdictions must either be famous

5

(in the USA) or have a

reputation

6

(in the EU), or be well-known

7

(in South Africa), all of these

being closely related concepts.

This article examines the interpretations that senior courts in these

jurisdictions have given to the word ‘similar’ in comparing trade marks

in dilution situations, and the similarity thresholds that have been set by

them. It also considers the function and ways in which the similarity

factor has been applied in various cases.

It may appear surprising that the meaning and interpretation of a

word so apparently plain and straightforward warrants any such consid-

eration. However, courts are generally cautious in applying new statu-

tory provisions and, as will be seen, certain of them have been unwilling

to interpret or apply the word ‘similar’ in dilution cases without placing

signif‌icant restrictions and qualif‌ications on its meaning.

Caution in approach in jurisdictions where dilution laws have been

relatively recently promulgated and have introduced a wholly new

concept of trade mark infringement, is, of course, understandable and

appropriate. This sentiment has been expressed as follows:

8

‘While the introduction of the dilution provisions is to be welcomed it is

submitted that great care must be taken by our courts in interpreting

Section 34(1)(c)(i) to ensure that the parameters of this new form of trade

mark protection are def‌ined in such a manner that the legitimate interest

of proprietors of well-known trade marks are protected while, at the same

time, not creating an absolute monopoly or a form of copyright in a trade

mark.’

What, particularly, prompted this examination were certain state-

ments made by, and the approach of, the Supreme Court of Appeal in

Yuppiechef Holdings (Pty) Ltd v Yuppie Gadgets Holdings (Pty) Ltd.

9

In

this case the court, in applying the trade mark similarity tests under

section 34(1)(a) — which requires the likelihood of deception or

confusion between the relevant trade marks — to the trade marks

YUPPIECHEF and YUPPIE GADGETS (for similar goods and services),

4

TMA ss10(17) and (34)(1)(c).

5

Section 43(c) of the Trade Marks Act of 1946, 15 USC s 1125(c) (the Lanham Act) as

amended by s 2 of the Trademark Dilution Revision Act 2006 (the TDRA).

6

See articles 8(5) and 9(2)(c) of the Regulation (EU) 2017/1001 of the European

Parliament and of the Council of 14 June 2017 (the European Regulation).

7

Trade Marks Act 194 of 1993.

8

Webster & Page, South African Law of Trade Marks, Unlawful Competition, Company

Names and Trading Styles (Butterworths 1997), as updated, para 12.24.

9

(1088/2015)[2016] ZASCA 118 (15 September 2016) SAFII, available at http://

www.saf‌lii.org/za/cases/SASCA/2016/118.html.

THE TRADE MARK SIMILARITY THRESHOLD AND FUNCTION IN DILUTION LAW 457

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