SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
Alternative Trade Mark Claims The following alternative claims can be brought by the proprietor of a trade mark. • Dilution – see discussion in “Proving Trade Mark and Copyright Infringement”. • Passing-off – this is a common law claim and requires the applicant to prove that: (a) they have a reputation in respect of the particular mark; (b) there is a misrepresentation by another trader that the goods/services are associ - ated with the applicant; and (c) there is a likelihood that the misrepresen - tation will lead consumers to believe that the businesses are related and damage the applicant’s goodwill. • Unlawful competition – this is a common law claim, and the applicant is required to estab - lish that the opponent is carrying on their trade in a wrongful manner that unlawfully interferes with the applicant’s goodwill in the business. • Cybersquatting – this refers to the pre-emp - tive registration of a trade mark belonging to another person as a domain name. For. za domain names, a domain name dispute can be filed with the South African Institute of Intellectual Property Law (SAIIPL) to chal - lenge the cybersquatters. This is done in terms of the Alternative Dispute Resolution Regulations – GN R1166 of 2006, which were enacted in terms of the Electronic Communi - cations and Transactions Act 25 of 2002. • Advertising Regulatory Board – where an advertisement exploits the advertising good - will of a trade name or is an imitation of an existing advertisement, they are in contra - vention of the Code of Advertising Practice. An applicant may submit a complaint to the Advertising Regulatory Board.
makes provision for the infringement of famous trade marks even if they are not registered or used in South Africa, provided that: • the mark is well-known in South Africa; • the owner of the mark is a national or is domi- ciled in a convention country; • the offending mark is a reproduction, imita - tion, reproduction or translation of the well- known mark; and • it is being used in relation to goods/services that are identical/similar to the goods/servic - es and such use is likely to cause deception or confusion. Copyright See the discussion in “Legal Claims for Infringe - ment Lawsuits”, as this outlines what constitutes copyright infringement. The elements that must be proven to establish infringement are as fol - lows. • Direct infringement – the copyright owner needs to prove that there has been copying of a substantial part of their work either by reproducing it or making adaptations of that work. • Indirect infringement – in the case of deal - ing in infringing copies, the copyright owner must prove that the articles in question are infringing copies in that they are unauthorised reproductions/adaptations of a work in which copyright subsists. Furthermore, the copy - right owner must prove that the person com - mitting the indirect infringement had “guilty knowledge” in that they were aware that they are infringing the copyright of another person. The biggest difference between direct and indi - rect infringement is the fact that the copyright owner must prove guilty knowledge in the case of indirect infringement.
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