SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
2.4 Use in Commerce In South Africa, proof of use in respect of a trade mark is not required for filing purposes. That said, once a trade mark has proceeded to registration, it may become vulnerable to expungement on the basis that the proprietor had no bona fide intention to use the mark or if there has been no use for a period of five years from the date of registration. The proprietor is merely required to prove that there has been bona fide use of a trade mark. The main consideration is that the use of the mark by the pro - prietor is to further its trade as opposed to frustrating the trade of others. In this regard, it is imperative that the use relied on is trade mark use and not descrip - tive use. 2.5 Notices and Symbols There are two symbols that are used with trade marks – namely, TM (in superscript) and ®. The owner of a mark may use the superscript TM symbol as soon as the trade mark is being used in trade and as a trade mark. Importantly, the ® symbol may only be used once the trade mark has proceeded to final reg - istration. Using the ® symbol before the trade mark has proceeded to registration amounts to a criminal offence in terms of Section 62 of the Trade Marks Act 194 of 1993. There are no consequences for not providing notice of trade mark ownership. However, it is advisable to always use the superscript TM symbol or ®, as these serve as a deterrent to potential infringers. 2.6 Related Rights In the case of a device mark, there may be an overlap between trade mark law and copyright law as well as design law. Copyright vests in the artistic work in the case of a logo and there may be an aesthetic or functional design for a particular article. By way of example, in the case of a unique bottle with a logo on it that has a particular function as a result of its shape, a trade mark application can be filed for the shape of the bottle, copyright may vest in the logo, and a functional design can be filed for the unique shape of the bottle.
Trade Marks Protected by Statute In terms of the Merchandise Marks Act 17 of 1941, certain trade marks are considered to be prohibited marks – the use of which is either absolutely or con - ditionally prohibited. There is a non-exhaustive list of trade marks that fall within this category, which include the current and former national flag of the Republic of South Africa. Furthermore, the Merchandise Marks Act 17 of 1941 affords the Minister of Trade, Industry and Competi - tion the power to designate an event as a “protected event”. The effect thereof is that for the duration of that event no one may use a trade mark related to the event (eg, the 2010 football World Cup). Section 35 of the Trade Marks Act 194 of 1993 pro - tects well-known/famous trade marks that are not in use or registered in South Africa, provided that the proprietor of the mark is a national of or domiciled in a Paris Convention country. 2.2 Essential Elements of Trade Mark Protection In order to qualify for trade mark protection, a mark must be distinctive in that it is capable of distinguish - ing the goods/services of a person in respect of which it is registered/proposed to be registered from the goods/services of another person as provided for in Section 9 of the Trade Marks Act 194 of 1993. The trade mark must be capable of the distinguish - ing function at the date of application for registration by being inherently capable of doing so or the trade mark must be capable of the distinguishing function by reason of prior use. Trade marks relying on prior use for their distinguish - ing function need to provide evidence of acquired distinctiveness. This is done through – inter alia – evi - dence of prior use, which should include turnover fig - ures and advertising spend during the period of use. 2.3 Trade Mark Rights The proprietor of a registered trade mark obtains a pri - ma facie statutory right to the exclusive use of a given trade mark. The proprietor’s rights are outlined by the Trade Marks Act 194 of 1993 and persist throughout the term of a given mark.
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