Audio Transcription of Interview on Classic FM on 19 June 2006; Usage and Protection of Trade Marks

TONY BLEWITT:

We are continuing our talk on Intellectual Property with Spoor & Fisher and in the studio this morning we have Carl van Rooyen, a partner at Spoor & Fisher.

Last week we talked about the process of selecting a trade mark. We will continue today with the topic of trade marks.

Does the law require a trade mark owner to use his trade mark in any particular manner?

CARL VAN ROOYEN:

If a trade mark is not used properly there is definitely a risk that the owner can lose its rights to the trade mark.

The Trade Marks Act states that if a trade mark is used deceptively by the owner, the owner will lose its rights to the trade mark. Deceptive use can occur where the label used by the owner suggests an origin other than the true country of origin. For example, it would be deceptive for a small local cosmetic manufacturer to have the words LONDON – PARIS - NEW YORK featured prominently on its label when neither the manufacturer nor the cosmetic company are in any way connected with those cities. If a trade mark suggests that the goods have a certain content or ingredient and this is not the case, it could be held that this is deceptive use. The other major basis upon which rights in a trade mark can be lost is when the trade mark is used in such a manner that the trade mark becomes generic. Manufacturers might be pleased to find that the trade mark achieves such public recognition that it becomes the name of the goods. The problem however is that as a result of such use the name will become generic and will fall into the public domain. Examples of trade marks that became ordinary words in the public domain are ASPIRIN, ESCALATOR, JACUZZI and WINDSURFER. A trade mark proprietor must therefore make an effort to ensure that the trade mark is always used as a trade mark and is not a generic term for goods or services. A trade mark should never be used as a noun or a verb. For example, if you are the owner of the HOOVER trade mark, advertising material should state that you should buy a HOOVER vacuum cleaner. It should not state that you should buy a HOOVER, nor do you HOOVER the carpet.

TONY BLEWITT:

One often sees an R symbol in a circle (®) or a TM symbol (™) used in conjunction with trade marks. What is the meaning of these?

CARL VAN ROOYEN:

The R symbol is recognised widely as a statement that the trade mark is registered. If such a symbol is used in conjunction with a trade mark that is not registered, it is likely that such use would constitute an offence under the South African trade marks law, which prohibits the use of words or letters which may falsely suggest the trade mark is registered.

The TM symbol is normally used to indicate that the owner is claiming trade mark rights in the feature concerned.

The TM symbol is usually an indication that the trade mark is pending and has not yet proceeded to registration. Where there is a risk that a trade mark might become the generic name of a product, all use of the trade mark should be accompanied by expressions such as REGISTERED TRADE MARK or an abbreviation thereof. Where such a trade mark is used in text, the use should be accompanied by an asterisk or possibly the R symbol, with an indication at the foot of the text that the word is a registered trade mark.

As a last thought on this point, it is important to mention that the neither the R nor the TM symbol provide any rights in the trade mark – these symbols are merely notices to the outside world not to copy.

TONY BLEWITT:

We have discussed trade marks, the registration thereof and rights that may flow therefrom, but what is the most important difference between a registered and an unregistered trade mark?

CARL VAN ROOYEN:

Registration of a trade mark affords the proprietor thereof statutory rights. The owner of a registered mark is given a certificate which is proof of its title in the mark. The statutory rights which I have mentioned entail that the owner of the mark can enforce its rights without having to prove any further that it has a protectable interest in the mark. Registration is by far the best way of protecting the integrity in the trade mark of a business.

If a trade mark is not registered, the owner thereof may still be able to protect it. However, such an owner would first be required to prove that he has acquired a substantial reputation and goodwill in the mark. Reputation and goodwill in a trade mark vest as a result of the actual use that may have been made thereof over a period of time. In this regard, it is possible even to register a trade mark that is not yet in use, provided that the intention exists to use the mark some time in future.

It goes without saying that it is normally a much more laborious exercise to protect and enforce an unregistered trade mark than what it is to do so in respect of one that is registered. This is so especially in respect of the duration, onus of proof and legal expenses aspects of the different types of enforcement.

TONY BLEWITT:

What is the duration of protection afforded to the owner of a trade mark by virtue of the registration thereof?

CARL VAN ROOYEN:

A trade mark registration can be maintained in perpetuity. Registration is granted for an initial period of 10 (ten) years. It is indeed possible to renew the registration, which renewal must be done every ten years.

TONY BLEWITT:

How far does the registration of a trade mark reach? Does it cover the whole world or is it limited to South Africa?

CARL VAN ROOYEN:

A trade mark is a territorial asset, meaning that registration thereof must be sought in every jurisdiction of interest to its proprietor. If the owner of a trade mark wishes to protect its mark, for example, in South Africa, Lesotho, Botswana and Germany, registration must be sought independently in each of these countries.

Registration of a trade mark in South Africa alone, would limit a proprietor’s rights that may be enforced as a result thereof to the Republic of South Africa. Another entity would, for example, be free to use and apply for the registration of the same mark in another country.

TONY BLEWITT:

OK. Alright, thank you very much indeed and thanks for being here

CARL VAN ROOYEN:

My pleasure.

Carl van Rooyen

Spoor & Fisher

Date published: 2006/06/19
Author: Carl van Rooyen

Tags: audio transcription classic fm trade marks