Thou shalt not covet your competitor’s trademark

What is infringement of a trademark?

Simply put (as if anything in legalese is ever simple!), it is the unauthorised use of a mark in the course of trade.

OK, what does that really mean in plain English? Four types of infringement of a trademark can be identified.

  1. Where the likelihood exists that the consumer will be confused by the similarity of two or more trademarks covering the same goods or services. There are three general tests employed to ascertain if marks are confusingly similar:
  • Do they sound the same? KOKE sounds the same as COKE, even though spellt differently. Infringement!
  • Do they look the same? That moment when you misread a word because it looks so similar to another? You thought you bought tickets to the ROLLING STONES but ended up watching the TROLLING CLONES? Yip, infringement!
  • Do they mean the same? In South Africa the magazine WEGBREEK (meaning break away) was found to be infringing on the magazine GETAWAY. Translated forms of a trademark can be seen as infringement.

2. The second infringement provision  relates to use in relation to similar goods, when confusion is likely. Can clothing and cosmetic labels become confused? Apparently so. Don’t think you can use AXE for clothing, because AXE the deodorant is so popular. They may not be in the same classes, but you can’t use the reputation of one to advance yours.

3. This provides the same scope of protection as number 2 but without a registration. It is required that the mark must be well known, as envisaged in the Paris Convention. Protection is possible, regardless of the fact that the owner of the trademark carries on business in South Africa or has any goodwill here.

4. This provides protection against the “unauthorised use of a mark that is identical or similar to a famous registered trade mark, in relation to any goods or services, if the use of the trade mark would be likely to take unfair advantage of or be detrimental to the distinctive character or the reputation of the registered trade mark, even if there is no likelihood of confusion or deception.” What this means: we all know those naughty T-shirts embossed with the logo or a well-known trademark, but with a twist to give it a totally different meaning?

Prof Wim Alberts writes in De Rebus:

“The Laugh It Off case has paved the way for the recognition of parody as an instance when a famous mark could be used without it necessarily amounting to infringement. Interesting developments have occurred in this regard overseas. For instance, the makers of the prestigious Louis Vuitton products were unsuccessful in trying to prevent the manufacture of a product for dogs called Chewy Vuiton. On the other hand, the Starbucks mark was protected by the American courts in an  instance where a similar logo along with the words “Consumer whore” was used. It seems that, both locally and overseas, famous trade marks are objects of perennial (commercial) inspiration to budding entrepreneurs.”

Well, it seems here you can sometimes do… and sometimes don’t! I suspect you will sooner or later end up in some form of litigation, so beware of who you rip off.

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