Trademarks and Business Names

Trademarks and Business Names - Quo Vadis?

by Reinhardt Buys

1. What is a trademark?

A trademark is a name or symbol used by a manufacturer of goods or services to identify its products or services and distinguish it from those of competitors.

Trademarks also serves to:

* confer a guarantee of quality to the consumer;

* prevent deception as to the source or origin of goods or services; and

* prevent confusion between products and services in a specific market.

Examples of trademarks in the Group are Huisgenoot, Rapport, Kalahari, Van Schaiks, Educor and Damelin.

There are two types of trademarks:

* Registered trademarks that are registered in terms of the Trademarks Act; and

* Common law trademarks; a mark will have common law protection if it can be proved that there is a certain reputation or goodwill associated with the name.

2. How is a trademark registered?

Trademarks are registered by filing the necessary application at the Trademarks Office in terms of the Trademarks Act 194 of 1993. To be registered the name or mark must inherently be capable of distinguishing the proprietor's goods or services from those of another. There are 42 classes to register a trademark in, however, the same mark could be registered in more that one class.

The following steps must be taken before an application for registration is made:

* A trademark search at the Trademark's Office to determine if any similar marks are registered.

* A domain name search to determine whether there is already a registered domain name that is confusingly the same as the proposed trademark.

* A closed corporation and company search to determine whether there is already a company or closed corporation with a name that is confusingly similar to the proposed trademark.

Trademarks are territorial and will only have protection in the country they are registered in. It is therefor important to register trademarks in every jurisdiction the Business Unit or company intends to do business in. However, certain well-known international trademarks have international protection in terms of the Paris Convention. If a trademark was registered, the owner acquires certain rights in terms of that mark for a period of 10 years and can be renewed indefinitely for further periods of 10 years. Common law trademarks are not registered but comes into existence automatically.

3. How is a trademark infringed?

The Trademarks Act provides for three principal types of infringement:

* Where an infringing mark is used in relation to the exact goods or services as that of the registered mark;

* Where the infringing mark is used in relation to goods or services which are similar to the goods or services as that of the registered mark;

* Where the registered mark is well know in South Africa and use of the infringing mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered mark (note that confusion or deception is not a requirement)

A common law trademark is usually infringed through "passing-off'. Passing off consist of an unlawful representation by one person that his/her goods or services are those of another or similar to those of another. In order to determine whether a representation amounts to passing-off, the Court will enquire whether there is a reasonable likelihood that members of the public are likely to be confused and a plaintive will have to prove that:

* He/she has a reputation or goodwill in the name or mark;

* The defendant has made a representation which is likely to confuse or deceive the public; and

* He/she has suffered, or is likely to suffer, damage as a result.

4. Trademarks general

The registration of a company or close corporation name does not necessarily provide for any trademark protection for such a company or closed corporation name. It is important that a trademark is used correctly as it may be removed from the register if:

* It was registered without a bona fide intention of using it and there has been no bona fide use for a period of three months before the date of application of cancellation; and

* If there has been no bona fide use of the trademark in relation for the goods or services for which it was registered for a period of five years from the date of issue of the certificate of registration up to a date of three months before the date of application for cancellation.

Reinhardt Buys is a partner at Buys Incorporated, a law firm specialising in internet, media and intellectual property law. Click here to visit their site.

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*	confer a guarantee of quality to the consumer;
*	prevent deception as to the source or origin of goods or services; and
*	prevent confusion between products and services in a specific market.

*	Registered trademarks that are registered in terms of the Trademarks Act; and
*	Common law trademarks; a mark will have common law protection if it can be proved that there is a certain reputation or goodwill associated with the name.

*	A trademark search at the Trademark's Office to determine if any similar marks are registered.
*	A domain name search to determine whether there is already a registered domain name that is confusingly the same as the proposed trademark.
*	A closed corporation and company search to determine whether there is already a company or closed corporation with a name that is confusingly similar to the proposed trademark.

*	Where an infringing mark is used in relation to the exact goods or services as that of the registered mark;
*	Where the infringing mark is used in relation to goods or services which are similar to the goods or services as that of the registered mark;
*	Where the registered mark is well know in South Africa and use of the infringing mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered mark (note that confusion or deception is not a requirement)

*	He/she has a reputation or goodwill in the name or mark;
*	The defendant has made a representation which is likely to confuse or deceive the public; and
*	He/she has suffered, or is likely to suffer, damage as a result.

*	It was registered without a bona fide intention of using it and there has been no bona fide use for a period of three months before the date of application of cancellation; and
*	If there has been no bona fide use of the trademark in relation for the goods or services for which it was registered for a period of five years from the date of issue of the certificate of registration up to a date of three months before the date of application for cancellation.