Unregistered trademarks


From: Cyberlaw@SA

Authors:

M Viljoen
BLC LLB
GM du Plessis
BLC LLB
G Vivier
BEng (Electronics Eng) BCom LLB

Unregistered trademarks
Our common law recognises the rights that a person acquires as goodwill (which includes, as a component, a reputation)13 or the ability to attract custom, which attaches to a trademark. The principles of unlawful competition and passing-off are of particular relevance. Passing-off has been defined in the case of Capital Estate & General Agencies (Pty) Limited v Holiday Inn, Inc.14 as follows:
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“The wrong known as passing-off consists in a representation by one person that his business (or merchandise, as the case may be) is that of another, or that it is associated with that of another, and, in order to determine whether a representation amounts to passing-off, one inquires whether there is a reasonable likelihood that members of the public may be confused into believing that the business of the one is, or is connected with, that of another”.

The protection afforded to a trademark owner in terms of the common law is in addition to any statutory protection the owner may have in terms of the Trade Marks Act and is not affected in any way by legislation on the subject of trademarks.15

The proprietor of a common law trademark is entitled to prevent another person from passing-off goods as being associated or connected, in the course of trade, with the proprietor or the proprietor’s goods. In this regard, the proprietor has to prove two things:
  • that he has used his mark to such an extent that he has acquired a reputation and goodwill in the mark
  • that the other person’s conduct is likely to cause deception or
    confusion among customers16

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