By BR Rutherfold

Introduction The present article presents how the British Trade Mark Act of 1994 and Trade Mark Act of 1993 of South Africa is designed in the line of the TRIPS Agreement and European Directives and provides broad protection to the trade mark proprietor. However, the higher judiciary of both the nations have with a view to reduce the monopolistic impact of these provisions have made a narrow interpretation to these provisions. While the European Court of Justice has taken a liberal approach while interpreting these provisions.

South African Trade Mark Act, 1993 (a) the unauthorised use of a registered trade mark or confusingly similar mark in relation to goods or services for which the trade mark is registered (primary infringement). (b) the unauthorised use of a registered trade mark or confusingly similar mark in relation to goods or services which are similar to the goods or services for which the trade mark is registered where there exists a likelihood of confusion (extended use). (c) the unauthorised use of a registered trade mark or confusingly similar mark in relation to any goods or services if such trade mark is well known in South Africa and the use thereof is likely to take unfair advantage of, or erode or dilute the distinctive character or repute of the trade mark. A likelihood of confusion is not required. (dilution)

Primary Infringement The previous Trade Mark Act, 1963 of South Africa provides two kinds of infringement: (i) unauthorised use of the trade mark as a trade mark or confusingly similar mark as a trade mark in relation to goods for which the trade mark was registered. (ii) unauthorised use of trade mark or confusingly similar mark otherwise than as a trade mark. In the new Trade Mark Act, 1993 no express distinction is made between the use of trade mark by the infringer as trade mark or otherwise than as a trade mark.

Judicial approach  Arsenal Football Club Plc. vs. Reed The European Court of Justice has propounded the ‘essential function rule’. According to the court the essential function of trade mark is to guarantee the identity of ‘origin of the market goods or services’ to the owner. Once it has been found that, the use of the sign in question by the third party is liable to affect the guarantee of origin of the goods, the trade mark proprietor must be allowed to prevent such use and it is immaterial in which context the sign is used.  Anheuser-Busch Inc. vs. Budejovicky Budvar, Narodni podnik.  Adam Opel AG vs. Autec AG.

 R vs. Johnstone In this case the House of Lords has deviated from the ruling of the European Court of Justice, has said that non-trade mark use does not infringe the right of proprietor of trade mark. Therefore, to constitute primary infringement, the European Court of Justice requires the impairment of the origin function of trade mark whereas the House of Lords requires use of allegedly infringing mark as trade mark.

 Verimark (Pty) Ltd. vs. BMW AG  The SC of Appeal in South Africa said that the purpose of trade mark registration is to protect the mark as a budge of origin.  To ascertain whether a mark is infringing the proprietors trade mark the context of use much be considered.  Commercial Auto Glass (Pty) Ltd. vs. BMW AG  The infringement under section 34 (1) (a) is restricted to trade mark use only.

Extended Infringement A similar approach is taken by both the British court (R vs. Johnstone) and South African Court (Verimark case) for this clause also, that is, only use of mark as a trade mark would constitute infringement under this section.

Dilution Article 5 (2) of European Directives, section 34 (1) (c) of South African Trade Mark Act & section 10 (3) of British Trade Mark Act It states that the proprietor of a well-known trade mark is entitled to prevent any unauthorised use in the course of trade of his registered trade mark or a similar mark in relation to any goods or services if the use complained of would be likely to either: (i) take unfair advantage of distinctive character of the registered trade mark; (ii) take unfair advantage of repute of the registered trade mark; (iii) be detrimental to the distinctive character of the registered trade mark; or (iv) be detrimental to the repute of the registered trade mark.

Detriment The term detriment suggests damage to the distinctive character of or repute of trade mark. Detriment to distinctive charterDetriment to repute It is also known as dilution by blurring. It occurs when a well known trade mark is used by others in relation to variety of other products. This leads to gradual consumer disassociation of the mark from the proprietor’s product. Also known as tarnishment. It occurs when a trade mark is used in relation to inferior products, or in offensive or negative context. This leads to unfavourable association attaching to the mark and consequent erosion of repute of the mark.

Judicial approach  Laugh it Off Promotions CC vs. South African Breweries International Finance BV t/a Sabmark International & Another.  The SC of appeal has added the requirement of unfairness in detrimental clause.  R vs. Johnstone  The House of Lords concluded that dilution clause also demands use as trade marks as pre-requisite for liability.  Verimark Case  The requirement of unfair use was also accepted by the Court of South Africa.  The use of mark as a trade mark is not required for the liability under this clause.

Conclusion To restrain the monopolistic impact of trade mark infringing provisions, the Courts in Europe and South Africa have not only interpreted the infringing provisions in restricted manner, but they have also added some requirement to constitute infringement of right of trade mark proprietor.

Indian Scenario In a country like India where a substantial proportion of the population is illiterate, wide power has been given to proprietor of trade mark against the infringer. Judicial approach- Indian judiciary has also interpreted the infringement provisions liberally. Glaxo Smith Kline Pharmaceutical Ltd. vs. Unitech Pharmaceuticals Pvt. Ltd.  Use of FEXIM is held infringement of plaintiff’s trade mark PHEXIM.

Conti.... M/s Bikanervala vs. M/s Agarwal Bikanervala  A party using deceptively similar mark only for a single shop can be stopped using it. N.R. Dongre vs. Whirlpool Cor. Ltd.  Even if a company is not doing business in the country, but it is a well known company or well known goods, then also it would be entitled to get authority over its trademark.

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