Trade mark law : can an unregistered mark beprotected prior to the acquisition of a reputation? : note

• Published date: 01 January 2015
• DOI: 10.10520/EJC182693
• Author: W. Alberts
• Date: 01 January 2015
• Pages: 430-438

430

Aantekeninge/Notes

Trade mark law: Can an unregistered mark be

protected prior to the acquisition of a reputation?

1Introduction

It is generally accepted that a ‘mere’ trade application fixes the date of

application, and not much else. Instead, the focus is on the two standard

forms of protection which exist in relation to a trade mark. Firstly, a trade

mark registration, which is arguably the most effective form of

protection. Protection in terms of the Trade Marks Act (194 of 1993) is

available immediately, on registration, and is not, in the short term,

dependent on the use of the mark. The registration will also

automatically extend across the country. Secondly, in the common law,

the remedy of passing off exists. This remedy will only be available once

a reputation has been established. It was clearly stated in Caterham Car

Sales and Coachworks Ltd v Birkin Cars (Pty) Ltd (1998 ZASCA 44) that (par

20):

The correct question can be distilled from the judgments on passing-off of

this Court mentioned earlier … In general terms, it appears to me to be

whether the plaintiff has, in a practical and business sense, a sufficient

reputation amongst a substantial number of persons who are either clients or

potential clients of his business (own emphasis).

Seemingly, then, where a simple trade mark application is at hand, it

might be problematic to obtain protection for such a mark. A scenario

that might seemingly fall outside the sphere of the above two standard

forms of protection, is where a business has spent millions of rand to

prepare to launch a new product, only to find that a competitor has

launched a similar product under a confusingly similar name a day

before. There is considerable confusion in the market. The business does

not have a reputation in the market yet, neither a trade mark registration,

and is seemingly without a remedy. Is the money spent wasted? The

unfairness of the situation is apparent. That being said, possible

situations in which protection might be available are discussed below.

2The Trade Marks Act

Upon registration, the proprietor of a registered mark is often perceived

to have ‘per se’ rights. The concept ‘per se’ is used to indicate rights

flowing from mere registration, whether there has been use of the mark

or not (see Webster & Page South African Law of Trade Marks (1997)

How to cite: Alberts ‘Trade mark law: Can an unregistered mark be protected prior to the acquisition of a

reputation?’ 2015 De Jure 430-438

http://dx.doi.org/10.17159/2225-7160/2015/v48n2a9