Trademark Infringement occurs when one party uses an identical or very similar trademark for identical or similar goods or services to a registered trademark. This will typically include cases where the public is misled by similarities between the trademarks to believe that these belong to the same owner or brand. Infringement may also arise from a situation where a similar trademark is used for different services or goods, but due to the significant reputation of the registered trademark, might damage or take advantage of the reputation of the registered mark.
Trading in cyberspace holds a whole new set of risks for possible trademark infringement. The Internet transgresses national boundaries and what might not seem like a trademark infringement in South Africa, might very well be one once a business goes on-line. The world wide web is international space which not only contains local trademarks, but the entire world’s. This increases the possibility of infringing on someone’s trademark without even realizing it.
Proper research should be conducted on possibilities of trademark infringement before a domain is registered, because the availability of a domain name will not guarantee safety from infringement. This is why it would be helpful to register a trademark or brand name as part of a domain name long before the business goes on-line.
An owner of a trademark may commence legal proceedings against an infringing party. No legal proceedings can follow an earlier trademark if it is unregistered. Unregistered trademarks may still be protected under common law depending on the circumstances. These circumstances may include :
- How long the owner of the unregistered trademark was trading under the mark before the later trademark made and appearance.
- How similar the two trademarks are with relation to their fields of trade and the level of confusion it inspires.
- The extent of the damage such confusion would cause the owner of the unregistered trademark.
If these conditions are met, the owner may commence legal proceedings under common law for passing off. The party accused of infringement may be able to defeat legal proceedings if it can establish a valid exception or defense to the infringement charge, or attack and cancel the underlying registration upon which the proceedings are based.
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