The Agreement on Trade Related Aspects of Intellectual Property Rights

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) defines trademarks as any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 16(1) of the same agreement goes on to state that the owner or proprietor of a trademark has exclusive right over its use and this means that he or she can sue any other person or company that uses its mark. This right only comes with registration, there can be no action for infringement of an unregistered trademark. The Trade Mark (Amendment) Act provides for two main ways in which a trademark may be infringed, the essay below will discuss these and their defences, in depth with specific reference to caselaw and legislation.
The Trademark (Amendment) Act, provides for two ways in which a trademark may be infringed. Firstly, a trademark can be infringed by, any unauthorised use in the course of trade, whether as a trade mark or otherwise, of a mark that is identical to the registered trade mark or so nearly resembling it as to be likely to deceive or cause confusion, where that mark is used in relation to the same or similar goods or services as those in respect of which the trade mark is registered. This provision is identical to Section 34 of the South African Trademark Act. It makes deceit and the ‘likelihood of confusion’ the yardstick to determine whether or not there has been an infringement of a trade mark.
The onus is on the plaintiff to show the probability or likelihood of deception or confusion. In considering whether this onus has been discharged, the concept of global appreciation should be applied, that is a global appreciation of the visual aural and conceptual similarities in the marks in question. It is important to note that here the consideration is not whether there are differences, but whether the general appearance is such that a person looking casually at the marks (with an imperfect recollection) would be deceived. In the case of Adcock Ingram Ltd v Suresh Patel T/A DOLLY Lou , the appellant failed to show any one instance of confusion or deceit considering that the two marks had co-existed for a very long time. The court held that although proof of likelihood of confusion would aid an applicant’s case, it was not a requirement on terms of the statute.
Furthermore, in considering whether or not there has been a trademark infringement, the comparison between the two marks must be of the whole trademark and every feature must be taken into account. While the dominant feature of each mark may, in certain cases, be the determining feature, the true rule is a broader one, namely that the comparison is to be made between the main idea or impression left on the mind by each of the marks, having regard to any essential or salient or leading or striking feature or features in each. An indication of the likelihood of confusion concerning the two marks implies that there has been a trade mark infringement.
To add on, the enquiry as to whether or not there is a likelihood of confusion or deceit is to be judged with the average purchaser in mind and their first impression of the mark. It has long been the trademark law that the ‘first impression’, whether it be in relation to the sound of a mark, when pronounced, or its appearance of the dominant feature of the mark, is usually the most reliable guide for deciding whether there is a likelihood of confusion. Although the comparison is made in respect of all three aspects, the applicant does not have to show a similarity in respect of each and every one of them, any of the three would suffice to give rise to deception or confusion sufficient constitute an infringement of the trademark. The rationale behind this is to ensure that the trade mark, being the intellectual property of a proprietor, is highly protected.
The second way of infringing a trademark which is provided for in the Trademark Act is where:
‘A mark that is identical to a registered trade mark is used as a trade mark in respect of the same goods or services as those in respect of which the registered mark is registered, it shall be presumed, unless the contrary is proved, that such use is likely to deceive or cause confusion.”.
More so, even where goods or services are not similar, Article 16(3) of TRIPS provides that there can be an infringement provided that such use will suggest a connection between the junior mark and the proprietor and if such use results in harm to the proprietor’s trade.
Furthermore, the nature of the ‘goods or services’ plays a pivotal role in the above mentioned determination. In the case of Sportshoe (Pty) v Pep Stores (SA) (Pty) , the respondent operated retails stores which sold a shoe bearing the name Grand Prix’, which was registered as a trade mark. The appellant manufactured tennis shoes on which the word ‘Grandprix’ appeared with a well-known adidas trademark. The court held that the variances in the price ranges and outlets showed that the products did not draw the same or similar custom and as such, there was no common field of business activity between them. Thus the prices and outlets of the goods or services should be similar such that an average consumer might mistake the ones with the junior mark for the ones with the original trade mark.
In addition, the wording of the Trademark Act shows that the use of a mark ‘in the course of trade is also a determinant factor as to whether or not there has been an infringement of the trade mark. For the purposes of this enquiry, the English courts have adopted the ‘Notional user doctrine’. According to this doctrine, the manner in which the respective parties have actually used the marks in question is not the determining factor in deciding whether there is a probability of deception or confusion, instead it is how these marks are used which determines whether there has been an infringement or not. A clear explanation of this requirement was given by Sir Duncan Kerly in Lever Bros Port Sunlight Ltd v Sunniwite Products , as follows:
‘In this definition of the phrase ‘the use by the defendant for trade purposes’ means not merely the particular use which the defendant has in fact made of his mark, or the use which he proposes to make of it, but the use of the mark itself in any manner which can be regarded as fair use of it.’
While the notional user doctrine has also been implemented by many courts including South Africa, it has been regarded as a contentious doctrine. For instance, its practicality was questioned by the Cape\Court in Van Riebeeck Paints (Ptv) Ltd v Plascon Evans Paints Ltd where it was stated that it had difficulties applying the notional user approach, in relation to the applicable mark. “If the actual proven user by the defendant falls outside the ambit of the plaintiff’s monopoly, then I fail to understand how it can be said to infringe merely on the ground that a notional fair and normal user of his mark…” It is therefore due to the said case that the courts have generally departed from the notional user doctrine.
Any defaming use of a trademark or its mimicking, which is aimed at harming the trade mark or its reputation, amounts to a trade mark infringement. According to Section 9(2) (f) of the trademark Act, a trade mark will be deemed to be infringed ‘in a case in which the trade mark is upon the goods or in relation to the services, the addition to the goods or in relation to the services of any other matter in writing that is likely to cause injury or prejudice to the reputation of the trade mark.
The issue of defaming a trade mark was adequately addressed in the case of Laugh it Off CC v South African Breweries International. In this case the defendant was being sued by the proprietor of the trade mark ‘Black Label Carling Beer’ for slandering their trade mark through designer T-Shirts which, instead of ‘Black Label Carling Beer’ read inter alia, ‘Black Labour White Guilt’. The court held that the communication on the T-shirt is significantly injurious to the character and repute of the marks; to the consumers, is displays an “unfair” and “unjustified racial slur” on the trade mark owner. The court found that the message on the defendant’s t-shirts amounted to an infringement of the Black label trade mark.
Precedence has demonstrated that trademark infringement can only be claimed by a proprietor who has acquired goodwill. In F W Woolworth ; Co (Zim) (Pvt) Ltd v The Store ; Anor the court explained that:
‘Goodwill is the totality of attributes that lure or entice clients or potential clients to support a particular business. As passing off harms the reputational element of goodwill, P must prove that he has acquired a business reputation associated with his business name.’
In casu, the plaintiff had failed to prove that his business had acquired a trading reputation of its own and due to that, that there was a reasonable likelihood that the average consumers would confuse the two businesses given the totally different nature of their trade. From this case, it can be noted that in dealing with infringement, the courts consider numerous factors like the area of operation, how the operations are carried out and the nature of the two businesses concerned.
On the other hand, it is important to note that there are defences to these infringements. For instance, one can successfully raise a defence by way of attacking the validity of registration of the original trademark. It is open to a defendant to seek to avoid an action for infringement by counter-claiming for expungement of the trade mark upon which the action is based. Section 12 (1) of the Trademark Act enlists the requirements that should be met in order for a trademark to be registrable. It therefore follows that if a defendant is able to successfully attack the validity of the original trade mark’s registration, then the proprietor can no longer have standing to sue for infringement.

More so, a defendant who is being sued for infringement of a trademark can also raise the defence of concurrent registration to evade liability. In appropriate cases, the court may stay the infringement proceedings to enable the defendant to apply for registration on the basis of honest concurrent user. This defence can only be utilized where:
a) The defendant uses the trade mark in the form in which it is registered.
b) The mark was used during the time for which it was validly registered.
The court after considering the above, makes an enquiry as to the best way to ensure that the interests of justice prevail. This defence is therefore never blindly accepted by the courts, they exercise their discretionary powers as to whether it suffices.
Moreover, a proprietor has exclusive rights over his or her trademark , however, such rights cannot be exercised against an anterior user of the mark in question. Section 10 of the Act provides that a proprietor shall not have right to sue any person that has continuously used the trade mark from a date anterior to-
(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or
(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor…

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Furthermore, a defendant may be precluded from liability in instances where the same uses a trademark which is their name. ‘No registration of a trade mark shall interfere with any bona fide use by a person of his own name or the name of his place of business, or that of his predecessor in business…’This is provided for in Section 11 (1) (a) of the Trademark Act which specifies that such use must be bona fide, for the defence to suffice. In the case of Baume & Co Ltd v Moore (AH) Ltd , his lordship, Denckwerts stated that, “…if a trader is honestly using his own name, then no action will lie for infringement of trade mark and any rival trader who thinks himself aggrieved must sue, if at all, for passing off.”
In addition, express or implied consent by the proprietor is a defence to trademark infringement. The Trade Mark Act states that a defendant shall be precluded from liability for infringement in stances where at any given time, the proprietor gave his express or implied consent to such use. The whole concept of infringement revolves around unauthorized use of the proprietor’s registered trade mark by another. It therefore follows that where the junior mark is being used with the implied consent of the proprietor, then there is no infringement to talk about.
The aforementioned defence works in line with the defence of acquiescence or tacit consent. The defence of acquiescence precludes a person, who having full knowledge of their rights and of the infringement of those rights, sits idly by without asserting them. Acquiescence is a form of tacit consent, and requires an unequivocal indication by the person sought to be so precluded of their acceptance of the infringement of their rights. However, there is some controversy regarding this defence because it contradicts the proprietor’s statutory right to enforce their right especially considering that this right does not prescribe. The mere failure to enforce a right provided for by statute does not amount to a waiver of such right, thus a party cannot be estopped from enforcing their right.
More so, according to the Trademark Act, the bona fide use of words that are descriptive of goods or services offered is a defence to alleged trademark infringement. The use of the words must not be a mere device to secure some ulterior motive, as for example where the words are used in order to take advantage of the goodwill attaching to the registered trade mark of another. In order to succeed in claiming infringement, the applicant will have to establish that the descriptive words in question have acquired a secondary or subsidiary meaning thus applicant must show that a substantive number of persons in the trade have associated such words with his or her goods or services. This defence has been regarded as a limitation to the right of a proprietor in numerous legislation including the South African Trademark Act.
In conclusion, the provision of trade mark infringements, its defences and available remedies are all meant to ensure protection of the proprietor’s intellectual property, which encourages continued innovation.

What about article 16(3) of TRIPS where confusion is not required

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) defines trademarks as any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 16(1) of the same agreement goes on to state that the owner or proprietor of a trademark has exclusive right over its use and this means that he or she can sue any other person or company that uses its mark. This right only comes with registration, there can be no action for infringement of an unregistered trademark. The Trade Mark (Amendment) Act provides for two main ways in which a trademark may be infringed, the essay below will discuss these and their defences, in depth with specific reference to caselaw and legislation.
The Trademark (Amendment) Act, provides for two ways in which a trademark may be infringed. Firstly, a trademark can be infringed by, any unauthorised use in the course of trade, whether as a trade mark or otherwise, of a mark that is identical to the registered trade mark or so nearly resembling it as to be likely to deceive or cause confusion, where that mark is used in relation to the same or similar goods or services as those in respect of which the trade mark is registered. This provision is identical to Section 34 of the South African Trademark Act. It makes deceit and the ‘likelihood of confusion’ the yardstick to determine whether or not there has been an infringement of a trade mark.
The onus is on the plaintiff to show the probability or likelihood of deception or confusion. In considering whether this onus has been discharged, the concept of global appreciation should be applied, that is a global appreciation of the visual aural and conceptual similarities in the marks in question. It is important to note that here the consideration is not whether there are differences, but whether the general appearance is such that a person looking casually at the marks (with an imperfect recollection) would be deceived. In the case of Adcock Ingram Ltd v Suresh Patel T/A DOLLY Lou , the appellant failed to show any one instance of confusion or deceit considering that the two marks had co-existed for a very long time. The court held that although proof of likelihood of confusion would aid an applicant’s case, it was not a requirement on terms of the statute.
Furthermore, in considering whether or not there has been a trademark infringement, the comparison between the two marks must be of the whole trademark and every feature must be taken into account. While the dominant feature of each mark may, in certain cases, be the determining feature, the true rule is a broader one, namely that the comparison is to be made between the main idea or impression left on the mind by each of the marks, having regard to any essential or salient or leading or striking feature or features in each. An indication of the likelihood of confusion concerning the two marks implies that there has been a trade mark infringement.
To add on, the enquiry as to whether or not there is a likelihood of confusion or deceit is to be judged with the average purchaser in mind and their first impression of the mark. It has long been the trademark law that the ‘first impression’, whether it be in relation to the sound of a mark, when pronounced, or its appearance of the dominant feature of the mark, is usually the most reliable guide for deciding whether there is a likelihood of confusion. Although the comparison is made in respect of all three aspects, the applicant does not have to show a similarity in respect of each and every one of them, any of the three would suffice to give rise to deception or confusion sufficient constitute an infringement of the trademark. The rationale behind this is to ensure that the trade mark, being the intellectual property of a proprietor, is highly protected.
The second way of infringing a trademark which is provided for in the Trademark Act is where:
‘A mark that is identical to a registered trade mark is used as a trade mark in respect of the same goods or services as those in respect of which the registered mark is registered, it shall be presumed, unless the contrary is proved, that such use is likely to deceive or cause confusion.”.
More so, even where goods or services are not similar, Article 16(3) of TRIPS provides that there can be an infringement provided that such use will suggest a connection between the junior mark and the proprietor and if such use results in harm to the proprietor’s trade.
Furthermore, the nature of the ‘goods or services’ plays a pivotal role in the above mentioned determination. In the case of Sportshoe (Pty) v Pep Stores (SA) (Pty) , the respondent operated retails stores which sold a shoe bearing the name Grand Prix’, which was registered as a trade mark. The appellant manufactured tennis shoes on which the word ‘Grandprix’ appeared with a well-known adidas trademark. The court held that the variances in the price ranges and outlets showed that the products did not draw the same or similar custom and as such, there was no common field of business activity between them. Thus the prices and outlets of the goods or services should be similar such that an average consumer might mistake the ones with the junior mark for the ones with the original trade mark.
In addition, the wording of the Trademark Act shows that the use of a mark ‘in the course of trade is also a determinant factor as to whether or not there has been an infringement of the trade mark. For the purposes of this enquiry, the English courts have adopted the ‘Notional user doctrine’. According to this doctrine, the manner in which the respective parties have actually used the marks in question is not the determining factor in deciding whether there is a probability of deception or confusion, instead it is how these marks are used which determines whether there has been an infringement or not. A clear explanation of this requirement was given by Sir Duncan Kerly in Lever Bros Port Sunlight Ltd v Sunniwite Products , as follows:
‘In this definition of the phrase ‘the use by the defendant for trade purposes’ means not merely the particular use which the defendant has in fact made of his mark, or the use which he proposes to make of it, but the use of the mark itself in any manner which can be regarded as fair use of it.’
While the notional user doctrine has also been implemented by many courts including South Africa, it has been regarded as a contentious doctrine. For instance, its practicality was questioned by the Cape\Court in Van Riebeeck Paints (Ptv) Ltd v Plascon Evans Paints Ltd where it was stated that it had difficulties applying the notional user approach, in relation to the applicable mark. “If the actual proven user by the defendant falls outside the ambit of the plaintiff’s monopoly, then I fail to understand how it can be said to infringe merely on the ground that a notional fair and normal user of his mark…” It is therefore due to the said case that the courts have generally departed from the notional user doctrine.
Any defaming use of a trademark or its mimicking, which is aimed at harming the trade mark or its reputation, amounts to a trade mark infringement. According to Section 9(2) (f) of the trademark Act, a trade mark will be deemed to be infringed ‘in a case in which the trade mark is upon the goods or in relation to the services, the addition to the goods or in relation to the services of any other matter in writing that is likely to cause injury or prejudice to the reputation of the trade mark.
The issue of defaming a trade mark was adequately addressed in the case of Laugh it Off CC v South African Breweries International. In this case the defendant was being sued by the proprietor of the trade mark ‘Black Label Carling Beer’ for slandering their trade mark through designer T-Shirts which, instead of ‘Black Label Carling Beer’ read inter alia, ‘Black Labour White Guilt’. The court held that the communication on the T-shirt is significantly injurious to the character and repute of the marks; to the consumers, is displays an “unfair” and “unjustified racial slur” on the trade mark owner. The court found that the message on the defendant’s t-shirts amounted to an infringement of the Black label trade mark.
Precedence has demonstrated that trademark infringement can only be claimed by a proprietor who has acquired goodwill. In F W Woolworth & Co (Zim) (Pvt) Ltd v The Store & Anor the court explained that:
‘Goodwill is the totality of attributes that lure or entice clients or potential clients to support a particular business. As passing off harms the reputational element of goodwill, P must prove that he has acquired a business reputation associated with his business name.’
In casu, the plaintiff had failed to prove that his business had acquired a trading reputation of its own and due to that, that there was a reasonable likelihood that the average consumers would confuse the two businesses given the totally different nature of their trade. From this case, it can be noted that in dealing with infringement, the courts consider numerous factors like the area of operation, how the operations are carried out and the nature of the two businesses concerned.
On the other hand, it is important to note that there are defences to these infringements. For instance, one can successfully raise a defence by way of attacking the validity of registration of the original trademark. It is open to a defendant to seek to avoid an action for infringement by counter-claiming for expungement of the trade mark upon which the action is based. Section 12 (1) of the Trademark Act enlists the requirements that should be met in order for a trademark to be registrable. It therefore follows that if a defendant is able to successfully attack the validity of the original trade mark’s registration, then the proprietor can no longer have standing to sue for infringement.

More so, a defendant who is being sued for infringement of a trademark can also raise the defence of concurrent registration to evade liability. In appropriate cases, the court may stay the infringement proceedings to enable the defendant to apply for registration on the basis of honest concurrent user. This defence can only be utilized where:
a) The defendant uses the trade mark in the form in which it is registered.
b) The mark was used during the time for which it was validly registered.
The court after considering the above, makes an enquiry as to the best way to ensure that the interests of justice prevail. This defence is therefore never blindly accepted by the courts, they exercise their discretionary powers as to whether it suffices.
Moreover, a proprietor has exclusive rights over his or her trademark , however, such rights cannot be exercised against an anterior user of the mark in question. Section 10 of the Act provides that a proprietor shall not have right to sue any person that has continuously used the trade mark from a date anterior to-
(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or
(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor…

Furthermore, a defendant may be precluded from liability in instances where the same uses a trademark which is their name. ‘No registration of a trade mark shall interfere with any bona fide use by a person of his own name or the name of his place of business, or that of his predecessor in business…’This is provided for in Section 11 (1) (a) of the Trademark Act which specifies that such use must be bona fide, for the defence to suffice. In the case of Baume ; Co Ltd v Moore (AH) Ltd , his lordship, Denckwerts stated that, “…if a trader is honestly using his own name, then no action will lie for infringement of trade mark and any rival trader who thinks himself aggrieved must sue, if at all, for passing off.”
In addition, express or implied consent by the proprietor is a defence to trademark infringement. The Trade Mark Act states that a defendant shall be precluded from liability for infringement in stances where at any given time, the proprietor gave his express or implied consent to such use. The whole concept of infringement revolves around unauthorized use of the proprietor’s registered trade mark by another. It therefore follows that where the junior mark is being used with the implied consent of the proprietor, then there is no infringement to talk about.
The aforementioned defence works in line with the defence of acquiescence or tacit consent. The defence of acquiescence precludes a person, who having full knowledge of their rights and of the infringement of those rights, sits idly by without asserting them. Acquiescence is a form of tacit consent, and requires an unequivocal indication by the person sought to be so precluded of their acceptance of the infringement of their rights. However, there is some controversy regarding this defence because it contradicts the proprietor’s statutory right to enforce their right especially considering that this right does not prescribe. The mere failure to enforce a right provided for by statute does not amount to a waiver of such right, thus a party cannot be estopped from enforcing their right.
More so, according to the Trademark Act, the bona fide use of words that are descriptive of goods or services offered is a defence to alleged trademark infringement. The use of the words must not be a mere device to secure some ulterior motive, as for example where the words are used in order to take advantage of the goodwill attaching to the registered trade mark of another. In order to succeed in claiming infringement, the applicant will have to establish that the descriptive words in question have acquired a secondary or subsidiary meaning thus applicant must show that a substantive number of persons in the trade have associated such words with his or her goods or services. This defence has been regarded as a limitation to the right of a proprietor in numerous legislation including the South African Trademark Act.
In conclusion, the provision of trade mark infringements, its defences and available remedies are all meant to ensure protection of the proprietor’s intellectual property, which encourages continued innovation.

What about article 16(3) of TRIPS where confusion is not required

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) defines trademarks as any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 16(1) of the same agreement goes on to state that the owner or proprietor of a trademark has exclusive right over its use and this means that he or she can sue any other person or company that uses its mark. This right only comes with registration, there can be no action for infringement of an unregistered trademark. The Trade Mark (Amendment) Act provides for two main ways in which a trademark may be infringed, the essay below will discuss these and their defences, in depth with specific reference to caselaw and legislation.
The Trademark (Amendment) Act, provides for two ways in which a trademark may be infringed. Firstly, a trademark can be infringed by, any unauthorised use in the course of trade, whether as a trade mark or otherwise, of a mark that is identical to the registered trade mark or so nearly resembling it as to be likely to deceive or cause confusion, where that mark is used in relation to the same or similar goods or services as those in respect of which the trade mark is registered. This provision is identical to Section 34 of the South African Trademark Act. It makes deceit and the ‘likelihood of confusion’ the yardstick to determine whether or not there has been an infringement of a trade mark.
The onus is on the plaintiff to show the probability or likelihood of deception or confusion. In considering whether this onus has been discharged, the concept of global appreciation should be applied, that is a global appreciation of the visual aural and conceptual similarities in the marks in question. It is important to note that here the consideration is not whether there are differences, but whether the general appearance is such that a person looking casually at the marks (with an imperfect recollection) would be deceived. In the case of Adcock Ingram Ltd v Suresh Patel T/A DOLLY Lou , the appellant failed to show any one instance of confusion or deceit considering that the two marks had co-existed for a very long time. The court held that although proof of likelihood of confusion would aid an applicant’s case, it was not a requirement on terms of the statute.
Furthermore, in considering whether or not there has been a trademark infringement, the comparison between the two marks must be of the whole trademark and every feature must be taken into account. While the dominant feature of each mark may, in certain cases, be the determining feature, the true rule is a broader one, namely that the comparison is to be made between the main idea or impression left on the mind by each of the marks, having regard to any essential or salient or leading or striking feature or features in each. An indication of the likelihood of confusion concerning the two marks implies that there has been a trade mark infringement.
To add on, the enquiry as to whether or not there is a likelihood of confusion or deceit is to be judged with the average purchaser in mind and their first impression of the mark. It has long been the trademark law that the ‘first impression’, whether it be in relation to the sound of a mark, when pronounced, or its appearance of the dominant feature of the mark, is usually the most reliable guide for deciding whether there is a likelihood of confusion. Although the comparison is made in respect of all three aspects, the applicant does not have to show a similarity in respect of each and every one of them, any of the three would suffice to give rise to deception or confusion sufficient constitute an infringement of the trademark. The rationale behind this is to ensure that the trade mark, being the intellectual property of a proprietor, is highly protected.
The second way of infringing a trademark which is provided for in the Trademark Act is where:
‘A mark that is identical to a registered trade mark is used as a trade mark in respect of the same goods or services as those in respect of which the registered mark is registered, it shall be presumed, unless the contrary is proved, that such use is likely to deceive or cause confusion.”.
More so, even where goods or services are not similar, Article 16(3) of TRIPS provides that there can be an infringement provided that such use will suggest a connection between the junior mark and the proprietor and if such use results in harm to the proprietor’s trade.
Furthermore, the nature of the ‘goods or services’ plays a pivotal role in the above mentioned determination. In the case of Sportshoe (Pty) v Pep Stores (SA) (Pty) , the respondent operated retails stores which sold a shoe bearing the name Grand Prix’, which was registered as a trade mark. The appellant manufactured tennis shoes on which the word ‘Grandprix’ appeared with a well-known adidas trademark. The court held that the variances in the price ranges and outlets showed that the products did not draw the same or similar custom and as such, there was no common field of business activity between them. Thus the prices and outlets of the goods or services should be similar such that an average consumer might mistake the ones with the junior mark for the ones with the original trade mark.
In addition, the wording of the Trademark Act shows that the use of a mark ‘in the course of trade is also a determinant factor as to whether or not there has been an infringement of the trade mark. For the purposes of this enquiry, the English courts have adopted the ‘Notional user doctrine’. According to this doctrine, the manner in which the respective parties have actually used the marks in question is not the determining factor in deciding whether there is a probability of deception or confusion, instead it is how these marks are used which determines whether there has been an infringement or not. A clear explanation of this requirement was given by Sir Duncan Kerly in Lever Bros Port Sunlight Ltd v Sunniwite Products , as follows:
‘In this definition of the phrase ‘the use by the defendant for trade purposes’ means not merely the particular use which the defendant has in fact made of his mark, or the use which he proposes to make of it, but the use of the mark itself in any manner which can be regarded as fair use of it.’
While the notional user doctrine has also been implemented by many courts including South Africa, it has been regarded as a contentious doctrine. For instance, its practicality was questioned by the Cape\Court in Van Riebeeck Paints (Ptv) Ltd v Plascon Evans Paints Ltd where it was stated that it had difficulties applying the notional user approach, in relation to the applicable mark. “If the actual proven user by the defendant falls outside the ambit of the plaintiff’s monopoly, then I fail to understand how it can be said to infringe merely on the ground that a notional fair and normal user of his mark…” It is therefore due to the said case that the courts have generally departed from the notional user doctrine.
Any defaming use of a trademark or its mimicking, which is aimed at harming the trade mark or its reputation, amounts to a trade mark infringement. According to Section 9(2) (f) of the trademark Act, a trade mark will be deemed to be infringed ‘in a case in which the trade mark is upon the goods or in relation to the services, the addition to the goods or in relation to the services of any other matter in writing that is likely to cause injury or prejudice to the reputation of the trade mark.
The issue of defaming a trade mark was adequately addressed in the case of Laugh it Off CC v South African Breweries International. In this case the defendant was being sued by the proprietor of the trade mark ‘Black Label Carling Beer’ for slandering their trade mark through designer T-Shirts which, instead of ‘Black Label Carling Beer’ read inter alia, ‘Black Labour White Guilt’. The court held that the communication on the T-shirt is significantly injurious to the character and repute of the marks; to the consumers, is displays an “unfair” and “unjustified racial slur” on the trade mark owner. The court found that the message on the defendant’s t-shirts amounted to an infringement of the Black label trade mark.
Precedence has demonstrated that trademark infringement can only be claimed by a proprietor who has acquired goodwill. In F W Woolworth ; Co (Zim) (Pvt) Ltd v The Store ; Anor the court explained that:
‘Goodwill is the totality of attributes that lure or entice clients or potential clients to support a particular business. As passing off harms the reputational element of goodwill, P must prove that he has acquired a business reputation associated with his business name.’
In casu, the plaintiff had failed to prove that his business had acquired a trading reputation of its own and due to that, that there was a reasonable likelihood that the average consumers would confuse the two businesses given the totally different nature of their trade. From this case, it can be noted that in dealing with infringement, the courts consider numerous factors like the area of operation, how the operations are carried out and the nature of the two businesses concerned.
On the other hand, it is important to note that there are defences to these infringements. For instance, one can successfully raise a defence by way of attacking the validity of registration of the original trademark. It is open to a defendant to seek to avoid an action for infringement by counter-claiming for expungement of the trade mark upon which the action is based. Section 12 (1) of the Trademark Act enlists the requirements that should be met in order for a trademark to be registrable. It therefore follows that if a defendant is able to successfully attack the validity of the original trade mark’s registration, then the proprietor can no longer have standing to sue for infringement.

More so, a defendant who is being sued for infringement of a trademark can also raise the defence of concurrent registration to evade liability. In appropriate cases, the court may stay the infringement proceedings to enable the defendant to apply for registration on the basis of honest concurrent user. This defence can only be utilized where:
a) The defendant uses the trade mark in the form in which it is registered.
b) The mark was used during the time for which it was validly registered.
The court after considering the above, makes an enquiry as to the best way to ensure that the interests of justice prevail. This defence is therefore never blindly accepted by the courts, they exercise their discretionary powers as to whether it suffices.
Moreover, a proprietor has exclusive rights over his or her trademark , however, such rights cannot be exercised against an anterior user of the mark in question. Section 10 of the Act provides that a proprietor shall not have right to sue any person that has continuously used the trade mark from a date anterior to-
(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or
(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor…

Furthermore, a defendant may be precluded from liability in instances where the same uses a trademark which is their name. ‘No registration of a trade mark shall interfere with any bona fide use by a person of his own name or the name of his place of business, or that of his predecessor in business…’This is provided for in Section 11 (1) (a) of the Trademark Act which specifies that such use must be bona fide, for the defence to suffice. In the case of Baume & Co Ltd v Moore (AH) Ltd , his lordship, Denckwerts stated that, “…if a trader is honestly using his own name, then no action will lie for infringement of trade mark and any rival trader who thinks himself aggrieved must sue, if at all, for passing off.”
In addition, express or implied consent by the proprietor is a defence to trademark infringement. The Trade Mark Act states that a defendant shall be precluded from liability for infringement in stances where at any given time, the proprietor gave his express or implied consent to such use. The whole concept of infringement revolves around unauthorized use of the proprietor’s registered trade mark by another. It therefore follows that where the junior mark is being used with the implied consent of the proprietor, then there is no infringement to talk about.
The aforementioned defence works in line with the defence of acquiescence or tacit consent. The defence of acquiescence precludes a person, who having full knowledge of their rights and of the infringement of those rights, sits idly by without asserting them. Acquiescence is a form of tacit consent, and requires an unequivocal indication by the person sought to be so precluded of their acceptance of the infringement of their rights. However, there is some controversy regarding this defence because it contradicts the proprietor’s statutory right to enforce their right especially considering that this right does not prescribe. The mere failure to enforce a right provided for by statute does not amount to a waiver of such right, thus a party cannot be estopped from enforcing their right.
More so, according to the Trademark Act, the bona fide use of words that are descriptive of goods or services offered is a defence to alleged trademark infringement. The use of the words must not be a mere device to secure some ulterior motive, as for example where the words are used in order to take advantage of the goodwill attaching to the registered trade mark of another. In order to succeed in claiming infringement, the applicant will have to establish that the descriptive words in question have acquired a secondary or subsidiary meaning thus applicant must show that a substantive number of persons in the trade have associated such words with his or her goods or services. This defence has been regarded as a limitation to the right of a proprietor in numerous legislation including the South African Trademark Act.
In conclusion, the provision of trade mark infringements, its defences and available remedies are all meant to ensure protection of the proprietor’s intellectual property, which encourages continued innovation.

What about article 16(3) of TRIPS where confusion is not required

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) defines trademarks as any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 16(1) of the same agreement goes on to state that the owner or proprietor of a trademark has exclusive right over its use and this means that he or she can sue any other person or company that uses its mark. This right only comes with registration, there can be no action for infringement of an unregistered trademark. The Trade Mark (Amendment) Act provides for two main ways in which a trademark may be infringed, the essay below will discuss these and their defences, in depth with specific reference to caselaw and legislation.
The Trademark (Amendment) Act, provides for two ways in which a trademark may be infringed. Firstly, a trademark can be infringed by, any unauthorised use in the course of trade, whether as a trade mark or otherwise, of a mark that is identical to the registered trade mark or so nearly resembling it as to be likely to deceive or cause confusion, where that mark is used in relation to the same or similar goods or services as those in respect of which the trade mark is registered. This provision is identical to Section 34 of the South African Trademark Act. It makes deceit and the ‘likelihood of confusion’ the yardstick to determine whether or not there has been an infringement of a trade mark.
The onus is on the plaintiff to show the probability or likelihood of deception or confusion. In considering whether this onus has been discharged, the concept of global appreciation should be applied, that is a global appreciation of the visual aural and conceptual similarities in the marks in question. It is important to note that here the consideration is not whether there are differences, but whether the general appearance is such that a person looking casually at the marks (with an imperfect recollection) would be deceived. In the case of Adcock Ingram Ltd v Suresh Patel T/A DOLLY Lou , the appellant failed to show any one instance of confusion or deceit considering that the two marks had co-existed for a very long time. The court held that although proof of likelihood of confusion would aid an applicant’s case, it was not a requirement on terms of the statute.
Furthermore, in considering whether or not there has been a trademark infringement, the comparison between the two marks must be of the whole trademark and every feature must be taken into account. While the dominant feature of each mark may, in certain cases, be the determining feature, the true rule is a broader one, namely that the comparison is to be made between the main idea or impression left on the mind by each of the marks, having regard to any essential or salient or leading or striking feature or features in each. An indication of the likelihood of confusion concerning the two marks implies that there has been a trade mark infringement.
To add on, the enquiry as to whether or not there is a likelihood of confusion or deceit is to be judged with the average purchaser in mind and their first impression of the mark. It has long been the trademark law that the ‘first impression’, whether it be in relation to the sound of a mark, when pronounced, or its appearance of the dominant feature of the mark, is usually the most reliable guide for deciding whether there is a likelihood of confusion. Although the comparison is made in respect of all three aspects, the applicant does not have to show a similarity in respect of each and every one of them, any of the three would suffice to give rise to deception or confusion sufficient constitute an infringement of the trademark. The rationale behind this is to ensure that the trade mark, being the intellectual property of a proprietor, is highly protected.
The second way of infringing a trademark which is provided for in the Trademark Act is where:
‘A mark that is identical to a registered trade mark is used as a trade mark in respect of the same goods or services as those in respect of which the registered mark is registered, it shall be presumed, unless the contrary is proved, that such use is likely to deceive or cause confusion.”.
More so, even where goods or services are not similar, Article 16(3) of TRIPS provides that there can be an infringement provided that such use will suggest a connection between the junior mark and the proprietor and if such use results in harm to the proprietor’s trade.
Furthermore, the nature of the ‘goods or services’ plays a pivotal role in the above mentioned determination. In the case of Sportshoe (Pty) v Pep Stores (SA) (Pty) , the respondent operated retails stores which sold a shoe bearing the name Grand Prix’, which was registered as a trade mark. The appellant manufactured tennis shoes on which the word ‘Grandprix’ appeared with a well-known adidas trademark. The court held that the variances in the price ranges and outlets showed that the products did not draw the same or similar custom and as such, there was no common field of business activity between them. Thus the prices and outlets of the goods or services should be similar such that an average consumer might mistake the ones with the junior mark for the ones with the original trade mark.
In addition, the wording of the Trademark Act shows that the use of a mark ‘in the course of trade is also a determinant factor as to whether or not there has been an infringement of the trade mark. For the purposes of this enquiry, the English courts have adopted the ‘Notional user doctrine’. According to this doctrine, the manner in which the respective parties have actually used the marks in question is not the determining factor in deciding whether there is a probability of deception or confusion, instead it is how these marks are used which determines whether there has been an infringement or not. A clear explanation of this requirement was given by Sir Duncan Kerly in Lever Bros Port Sunlight Ltd v Sunniwite Products , as follows:
‘In this definition of the phrase ‘the use by the defendant for trade purposes’ means not merely the particular use which the defendant has in fact made of his mark, or the use which he proposes to make of it, but the use of the mark itself in any manner which can be regarded as fair use of it.’
While the notional user doctrine has also been implemented by many courts including South Africa, it has been regarded as a contentious doctrine. For instance, its practicality was questioned by the Cape\Court in Van Riebeeck Paints (Ptv) Ltd v Plascon Evans Paints Ltd where it was stated that it had difficulties applying the notional user approach, in relation to the applicable mark. “If the actual proven user by the defendant falls outside the ambit of the plaintiff’s monopoly, then I fail to understand how it can be said to infringe merely on the ground that a notional fair and normal user of his mark…” It is therefore due to the said case that the courts have generally departed from the notional user doctrine.

Any defaming use of a trademark or its mimicking, which is aimed at harming the trade mark or its reputation, amounts to a trade mark infringement. According to Section 9(2) (f) of the trademark Act, a trade mark will be deemed to be infringed ‘in a case in which the trade mark is upon the goods or in relation to the services, the addition to the goods or in relation to the services of any other matter in writing that is likely to cause injury or prejudice to the reputation of the trade mark.
The issue of defaming a trade mark was adequately addressed in the case of Laugh it Off CC v South African Breweries International. In this case the defendant was being sued by the proprietor of the trade mark ‘Black Label Carling Beer’ for slandering their trade mark through designer T-Shirts which, instead of ‘Black Label Carling Beer’ read inter alia, ‘Black Labour White Guilt’. The court held that the communication on the T-shirt is significantly injurious to the character and repute of the marks; to the consumers, is displays an “unfair” and “unjustified racial slur” on the trade mark owner. The court found that the message on the defendant’s t-shirts amounted to an infringement of the Black label trade mark.
Precedence has demonstrated that trademark infringement can only be claimed by a proprietor who has acquired goodwill. In F W Woolworth & Co (Zim) (Pvt) Ltd v The Store & Anor the court explained that:
‘Goodwill is the totality of attributes that lure or entice clients or potential clients to support a particular business. As passing off harms the reputational element of goodwill, P must prove that he has acquired a business reputation associated with his business name.’
In casu, the plaintiff had failed to prove that his business had acquired a trading reputation of its own and due to that, that there was a reasonable likelihood that the average consumers would confuse the two businesses given the totally different nature of their trade. From this case, it can be noted that in dealing with infringement, the courts consider numerous factors like the area of operation, how the operations are carried out and the nature of the two businesses concerned.
On the other hand, it is important to note that there are defences to these infringements. For instance, one can successfully raise a defence by way of attacking the validity of registration of the original trademark. It is open to a defendant to seek to avoid an action for infringement by counter-claiming for expungement of the trade mark upon which the action is based. Section 12 (1) of the Trademark Act enlists the requirements that should be met in order for a trademark to be registrable. It therefore follows that if a defendant is able to successfully attack the validity of the original trade mark’s registration, then the proprietor can no longer have standing to sue for infringement.

More so, a defendant who is being sued for infringement of a trademark can also raise the defence of concurrent registration to evade liability. In appropriate cases, the court may stay the infringement proceedings to enable the defendant to apply for registration on the basis of honest concurrent user. This defence can only be utilized where:
a) The defendant uses the trade mark in the form in which it is registered.
b) The mark was used during the time for which it was validly registered.
The court after considering the above, makes an enquiry as to the best way to ensure that the interests of justice prevail. This defence is therefore never blindly accepted by the courts, they exercise their discretionary powers as to whether it suffices.
Moreover, a proprietor has exclusive rights over his or her trademark , however, such rights cannot be exercised against an anterior user of the mark in question. Section 10 of the Act provides that a proprietor shall not have right to sue any person that has continuously used the trade mark from a date anterior to-
(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or
(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor…

Furthermore, a defendant may be precluded from liability in instances where the same uses a trademark which is their name. ‘No registration of a trade mark shall interfere with any bona fide use by a person of his own name or the name of his place of business, or that of his predecessor in business…’This is provided for in Section 11 (1) (a) of the Trademark Act which specifies that such use must be bona fide, for the defence to suffice. In the case of Baume ; Co Ltd v Moore (AH) Ltd , his lordship, Denckwerts stated that, “…if a trader is honestly using his own name, then no action will lie for infringement of trade mark and any rival trader who thinks himself aggrieved must sue, if at all, for passing off.”
In addition, express or implied consent by the proprietor is a defence to trademark infringement. The Trade Mark Act states that a defendant shall be precluded from liability for infringement in stances where at any given time, the proprietor gave his express or implied consent to such use. The whole concept of infringement revolves around unauthorized use of the proprietor’s registered trade mark by another. It therefore follows that where the junior mark is being used with the implied consent of the proprietor, then there is no infringement to talk about.
The aforementioned defence works in line with the defence of acquiescence or tacit consent. The defence of acquiescence precludes a person, who having full knowledge of their rights and of the infringement of those rights, sits idly by without asserting them. Acquiescence is a form of tacit consent, and requires an unequivocal indication by the person sought to be so precluded of their acceptance of the infringement of their rights. However, there is some controversy regarding this defence because it contradicts the proprietor’s statutory right to enforce their right especially considering that this right does not prescribe. The mere failure to enforce a right provided for by statute does not amount to a waiver of such right, thus a party cannot be estopped from enforcing their right.
More so, according to the Trademark Act, the bona fide use of words that are descriptive of goods or services offered is a defence to alleged trademark infringement. The use of the words must not be a mere device to secure some ulterior motive, as for example where the words are used in order to take advantage of the goodwill attaching to the registered trade mark of another. In order to succeed in claiming infringement, the applicant will have to establish that the descriptive words in question have acquired a secondary or subsidiary meaning thus applicant must show that a substantive number of persons in the trade have associated such words with his or her goods or services. This defence has been regarded as a limitation to the right of a proprietor in numerous legislation including the South African Trademark Act.
In conclusion, the provision of trade mark infringements, its defences and available remedies are all meant to ensure protection of the proprietor’s intellectual property, which encourages continued innovation.

What about article 16(3) of TRIPS where confusion is not required