IGZ 320 Group 9C Task 1 Co-created Notes

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IGZ 320 Class Group Project Task 1 - Co-created notes Introduction to Trademark Law, and requirements for trademark protection and registrability by Group 9C Group 9C members: Name and Surname: Student number: Aqsa Bataviya 21466638 Aliyah Fakir 20668814 Erin Hendricks 20429810 Sharna Jenkins 21511897 Lecian Joubert 21530816 Mlondi Ntuthuko Masondo 18116818 Refuoe Lebohang Mokhobo 15326812 Lethukuthula Nyalunga 19085495 Milienke van der Merwe 21438171 Aaliyah van Heerden 21531472

2.1 - 2.2.2 Trademark: a badge or symbol that a producer of goods or a supplier of services uses in relation to his goods or services → means by which a trader conveys the message that: Trademark law governed by: 1. The Constitution of the Republic of South Africa, 1996 (the Constitution, 1996) 2. Trade Marks Act 194 of 1993 (TMA) 3. Common law 4. The law of passing off ● One’s right to their intellectual Property is protected by and expressed in section 25 of the Constitution, 1996 ● Trade Mark Act establishes and regulates a system of registration of trademarks. ● The law of passing off deals with rights in respect of unregistered trademarks which fall outside the registration system and beyond statutory law This is my product/service. Examples: APP LE MTN Operates in parallel to TMA

Trademark formalities and registration: The use and value of registered trademarks in modern society Benefits to obtaining registered trademark rights: Trademark prosecution and formalities = protection of trademarks through registration = prosecution - registration of trademark rights and duties and included whether a mark qualifies as protectable Trademark enforcement and litigation = enable the enforcement of trademark rights (registered/unregistered) = includes passing off = enforcement - trademark oppositions, rectification/cancellation, infringement Holding a form of trademark registration is a form of insurance against the abuse of the good will and nature which may be attached to a brand. As a registered trademark owner – obtain an exclusive right to use a trademark upon or in relation to specific goods or services. This right doesn’t need to be proven through evidence of use but merely through the production of a certificate of registration. Registration gives notice of the rights claimed by trademark owner throughout a country and allows the trademark owner or licensee to use the words ‘registered trademark.’ This acts as a deterrent to potential infringers. Accounting standards and best practice require registered trademarks to be reflected at value on the balance sheet of individuals and companies. Gives recognition to the value of a trademark. Legal assets are created which may be sold and used under a license agreement. The commercial value of a trademark usually outweighs the ‘insurance’ function of a trademark. As statutory protection is afforded, a trademark owner is in a better position to attract licensees. Owners of a trademark are free to allow others to exercise their rights against payment of a license fee. A license is in the form of an agreement where a holder of a right allows a third party to exercise that right in return for remuneration (royalties/lump sum payment) . Trademarks can be used to secure debt .

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The difference between a brand and a trademark: The value of trademarks: ● Trademarks are valued and the value varies greatly. These variations depend on factors like: Brand Refers to essential image of the entire undertaking, its goods and what it stands for. A make or kind of goods bearing a trademark. Brand leader – best known/best-selling product or service in its type. Brand-image – assumed image or impression of the product/service in the consumer’s eye. Trademark Sign capable of distinguishing the goods and services of one trader from those of another. The brand promises the same quality of all goods sold and services offered under the predominant trade mark. Represents the soul of the enterprise.

● In South Africa, the most valuable trademarks are: 1 MTN Vodacom Standard Bank ABSA Sasol Netbank FNB Shoprite Netcare Investec 2.2.3 The Classification of Goods and Services Trade marks are: ● Used in connection with specific goods/services (e.g., Nike is used for clothing) AND ● Registered for the specific goods/services for which they will be used and for these goods/services only . ● S11 Trade Marks Act – Trademarks are registered for goods/services in particular classes in accordance with the prescribed classification and the rights arising from registration are determined in accordance with the prescribed classification applicable at date of registration. o Prescribed classification: SA follows the International Classification, the 10 th edition of the Nice Classification. 1 Luke Fraser ‘These are the most valuable brands in South Africa’ 19 August 2023 https://businesstech.co.za (accessed 15 September 2023). Revenue Profitability Profit share Market value Effect – A trade mark will protect those (or similar) goods/services only.

o The classes are listed in Schedule 3 to the South African Trade Mark Regulations. ● Main reason for classification – It allows trademark registrability and infringement searches to be conducted. ● Importance of correct classification – If the classification is incorrect, the trade mark may be invalid and removed from the register. ● Scope of goods/services covered by an application is limited by the parameters of the class in which the trade mark is filed and registered. ● The Registrar will publish any amendments to the classifications in the Patent Journal. o Trade Marks Act does NOT provide for automatic amendment whenever the Nice Classification changes – creates uncertainty. ● Difference between the SA heading for class 35 and the Nice Classification: S11(2) Trade Marks Act – If goods/services were correctly classified when lodging an application but the classification subsequently changes, the proprietor (trade mark owner) may at any time record the change. Appears to make reclassification voluntary (“may”) Likely that legislature intended to allow the owner to revise the classification at any time; NOT to make reclassification voluntary It is N.B. for all concerned that the class should be revised to be clear and accurate. BUT Still necessary for an owner to revise the classification of his trade mark.

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o SA heading – describes the services as “offering for sale and the sale of goods in the retail and wholesale trade”. 2 o Avoids the difficulty where court found “retail and wholesale trade” was not a service and trade marks registered in terms of such services were not enforceable. Should the specifications of goods/services in an application be defined broadly or narrowly? Below is a table specifying the disadvantages of both types of classifications Broad specifications Narrowly defined specifications Often used for trade mark applications in practice but makes a trade mark vulnerable to removal/partial removal Unduly limits the scope of the exclusive rights arising from registration and would possibly not cover goods for which the trade mark owner would like to use the trade mark in future Example: a trade mark will be removed on the grounds of non-use/insufficient use Example: If Nike applied with a specification of goods “casual footwear”, this would not allow them to use their trade mark to cover other footwear used for sporting activities The courts interpret the rights granted by a trade mark narrowly – a specification of goods/services should be drafted carefully. 2.2.4 – 2.2.5.2 Registrability and Conflict Procedure ** A trademark can only be protected as such and defended under the Trade Marks Act 194 of 1993 if it is registered** 3 **Trademark registration gives owners of distinctive signs, symbols, or words used to identify goods or services the sole right to prevent unlawful use of those signs, symbols, or words. 4 2 Schedule 3 of the Trade Mark Regulations. 3 Trade Mark Act 194 of 1993 sec 2. 4 Spoor & Fisher ‘Trademark rights and protection in South Africa’ 14 December 2018 https://www.lexology.com (accessed 1 October 2023).

Registration of trademarks Section 9(1) of the Trade Marks Act 194 of 1993: ● "In order to be registrable a trade mark shall be capable of distinguishing the goods and services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within those limitations." 5 *** The mere existence of a fancy word does not necessarily mean that it is registrable as a trade mark but usually a fancy name is distinctive. However, the ultimate test regarding distinctiveness remains. ● Register trademark with the Companies and Intellectual Property Commission (CIPC) ● The whole procedure will take approximately 18-24 months. ● If the registration is successful = Trademark rights will be granted retrospectively from the date that the application was received by CIPC. Lifespan of a trade mark - can be protected forever, provided it is renewed every ten (10) years upon payment of the prescribed renewal fee. Registered user S ection 38(6) of the Trade Marks Act 194 of 1993 + read with Regulation 39 ● A registered user is the person whom the owner of a registered trade mark legally permits to use his trademark. 6 Non-registrable trademarks Section 10 of the Trade Marks Act 194 of 1993: ● A list that provides those marks that cannot be registered as trademarks. 7 5 Trade Mark Act (n3 above) sec 9. 6 Trade Mark Act (n3 above) sec 38. 7 Trade Mark Act (n3 above) sec 10.

● If a trade mark is registered but it is not supposed to be = application for its removal. A few examples: 1. A mark which does not constitute a trade mark 2. A mark which; is not capable of distinguishing within the meaning of section 9 3. A mark in relation to which the applicant for registration has no bona fide claim to proprietorship 2 Groups: ● Trademarks that are absolutely unregistrable ● Trademarks that are relatively unregistrable 2.2.5.3 – 2.2.5.4 The registration procedure (registration process and filing the application) Overview understanding of the process: ● The registration procedure will begin with the applicant bringing forward the registration for the trademark. This will indicate if the trademark can be registered. ● The trademark registration will be sent to the office (the trademark office) ● Office will consider the registration and check if the trademark is available. ● Once the trademark is available the office will approve/accept thereafter advertising will take place. ● Once everything has been approved and there is acceptance followed by no opposition then registration will take place. ● The trademark is then allowed to be renewed after it is a registered trademark. Therefore, the registration process is as follows : 1 Search 2 Taking action 3 Acceptance of the registration 4 Advertising 5 Official registration Explanation and understanding the registration process:

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The applicant is bringing forward the application for registration to take place if the trademark is available. The applicant bringing forward the application is the individual who has an intention to use the trademark bona fide. Whereas the possessor is the individual who adopts the trademark. The applicant is responsible to deal with the filling of the trademark during this step. An acceptance will be given based on condition . The trademark Act states that registration will “entitle a person to exclusive use” 8 . However, the common law states that an individual is only entitled to exclusive use of a trademark if the mark has been used to a point where it has gained reputation which suggests that the goods and services referred to belong to the possessor. The applicant must be able to distinguish goods and services from each other. Note: registration will only grant rights in the country where the trademark is registered. In the Bergkelder case : 9 The most distinctive form is invented words and slogans, these have the capacity to distinguish. This is where the trademark registration will be sent to the office for registration to take place. A registration form must be filled in and the applicant will be informed about acceptance. The trademark office will ensure that the trademark is compliant with section 9 and section 10 10 . The registrar can accept the trademark as it is or with conditions. If the trademark is accepted with conditions, then these conditions are. Disclaimers, admissions, undertakings, association and the notice of the advertisement in a journal (this will happen in the case where the trademark conflicts with other trademarks) this is if the trademark is not compliant with section 9 and section 10. 8 Trade Mark Act (n3 above) sec 1. 9 Bergkelder BPK. v Vredendal Koop Wynmakery and Others (105/05)[2006]ZASCA 5. 10 Trade Mark Act (n3 above) secs 9 & 10. 1 Search 2 Taking Action 3 Acceptance of registration 4 Advertising

When acceptance has taken place and whether there is a condition or not, the trademark must be advertised in a journal known as the ‘patent journal’ this acquires the advertisement to stay open for a period of 3 months. During this time third parties can come forward and oppose registration of the trademark. a certificate for registration will be issued within 8 months if there has been no opposition towards the trademark. The trademark can be abandoned if registration has not taken place within 6 months from the date in which it was accepted according to section 20 of the trademark Act 11 . In the case where the advertisement was rejected section 21 states that an interested person can oppose an application. In the case of Central African Hotels : an interested person, is a person who has sufficient interest in this matter and has locus standi 12 . Once the trademark is registered it is valid for a period of 10 years from the date which the filing of the application took place and every 10 years thereafter. Trademarks can be renewed from 6 months before the 10-year period is over. The trademark also has a 6-month period of grace for late applications of a renewal of the trademark however this is subject to a penalty. Filing the application: The filing of the application begins with the application being filled where it is complied with the required procedure. Trademark regulations give an indication as to how the procedure should take place. A standard form is used known as the TM1 form in this form the following essential details are required: The name, addresses of applicant and the place where document is held, what the goods/services application is made for as well as what the goods/services is, the signature of the applicant. The application can be submitted via an electronic way. 2.2.5.5 The registration procedure The Examination by the Registrar 11 Section 20 & 21 of Trade Mark Act 194 of 1993 (n3 above) secs 20 & 21. 12 Slabbert N O & 3 Others v Ma-Afrika Hotels t/a Rivierbos Guest House (772/2021)[2022] ZASCA 152 (4 November 2022). 5 Official registration

The Registrar and his/her examiners must examine the trademark application and determine whether to: (a) Unconditionally approve it, or (b) Conditionally approve it subject to adjustments and/or conditions, (c) Provisionally reject it, or (d) Fully reject it. An ‘official action’ will be published where a trademark application is not approved unconditionally. The subject matter and demands of the ‘official action’ must be addressed for the application to be approved. Official actions must be answered within two months or within the period permitted by the Registrar. To protect the rights of the general public, the Registrar prescribes conditions for acceptance to qualify and limit the rights given by registration. Examples of conditions for acceptance ● Authority to act Trademark applications lodged by authorised agents 13 , must be accompanied by a power of attorney. ● Association of marks Section 30 of the Act 14 requires two or more trademarks that are similar be associated with each other and be commonly owned as to avoid confusion arising from different ownership. Associated trademarks are fixed together, with the impossibility of separate assignment. Thus, they must be assigned together unless association is dissolved. Disclaimer of rights The Registrar may restrict the rights of the applicant and require the disclaimer of exclusive rights where a trademark incorporates common elements (words/logos). Examples of the most common disclaimers: ● Disclaimer of features ordinarily represented: Rights are disclaimed in a word or an element that is common in the class or trade in question, as to avoid the monopoly of such common elements by any one entity. Thus, 13 Trade Mark Act (n3 above) sec 8(2). 14 Trade Marks Act (n3 above) sec 30.

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trademark registration gives no right to the exclusive use of a common word or element separately and independently from the trademark. ● Disclaimer of features represented in a special form: Trademark Registration shall give only exclusive rights to the use of common words or elements when drafted in a special format as it appears from the trademark accompanying the application. ● Admissions: Trademarks incorporating abbreviated/misspelled versions (i.e., X-TRA) of descriptive words (i.e., EXTRA) reasonably required for use in trade, will only accrue exclusive rights in the abbreviated/misspelled form in which they appear in the trademark (X-TRA). Thus, registration cannot deny the public the bone fide use of the descriptive word (EXTRA) in the course of trade. Furthermore, the admissions endorsement practice also applies to the use of surnames. Thus, trademarks incorporating a surname shall not deny the public the bona fide use of the surname in the course of trade. ● Other common endorsements include: 1. Colour; 2. geographical words; 3. descriptive wording appearing in a mark; 4. marks in other languages; 5. the meaning and/or derivation of a mark; 6. varietal plant names; 7. limitation of the manner of use of the mark; 8. blank spaces appearing in a mark; 9. consents to registration given by third parties 10. use of cross devices 2.2.5.6 - 2.2.5.7 Refusal Of Trademark Applications ● REGISTRAR may refuse registration of a trademark. ● On ABSOLUTE or RELATIVE grounds

● ABSOLUTE – referring to the innate characteristics of a mark. ● RELATIVE – conflict of rights held by third parties, if mark clashes with a preceding mark similar to that in question. WAYS OF DEALING WITH THE REFUSAL OF AN APPLICATION ● Take the matter to an informal hearing before the Registrar of Trademarks. ○ Oral arguments to overcome obstacle to acceptance is be brought forward (written arguments/representations may also be made) CONFLICTING MARK ● Where there is a conflicting mark – Dispute can be resolved, consent to use and registration can be submitted to the Registrar . ● If a third party consents to registration – Registrar has NO discretion to refuse the registration. NEGOTIATION OF ACCEPTANCE ● Possible to negotiate on a basis that would be mutually satisfactory. ● In this instance, application proceeds acceptance ● If the registrar will not accept the application and refuses the registration – the applicant can request a written reason for refusal from the registrar. ● Written reasons serve as the basis for an appeal against registrars’ refusal before high court. ACCEPTANCE, ADVERTISEMENT AND REGISTRATION ● Once an application is placed in line for acceptance – formal notice of acceptance is issued by the registrar. ● Application proceeds to advertisement in Patent Journal. ● Mark advertised – any interested parties can object/oppose registration of the mark. ● If no objection is raised after advertisement – certificate of registration will be issued by the registrar. 2.2.6 Amendment of trademarks and specifications of goods/services ● S25 Trade Marks Act – registration mark may be amended if: o It does not “substantially affect the identity” of the original mark.

o Not applicable to pending applications. ● However, in practice the principle is also applied in the amendment of marks that are subjects of pending applications. ● General rule = amendment should be permitted if key elements of the mark are preserved. ● Registrar allows or denies amendment of mark. 15 ● S23 Trade Marks Act – errors in the register may be corrected at the Registrar’s discretion. o Also be corrected on request of the owner of the trademark. o Extends to the amendment of specification of goods/services of a registered trademark. ▪ Only if it does not increase the scope of the registered trademark's specification of goods or services or jeopardize other parties' rights can a modification to the specification of goods/services be permitted. 16 2.2.7 Renewal of trade marks 17 15 Trade Mark Act (n3 above) sec 25. 16 Trade Mark Act (n3 above) sec 23. 17 Trade Mark Act 194 of 1993 sec 37 & 26 & 27 of the Trade Mark Regulations. Bernstein Manufacturing Co (1961) (Pvt) Ltd v Shepherdson Meaning of “substantially affecting identity” determined Question asked in case: is the mark in use the registered mark? ‘Arresting features’ test If two marks (mark as used and mark as registered) are compared side by side, it must be obvious that the used mark has kept the registered mark’s “arresting features”. Similar factors should be considered when determining the extent to which registered trademarks may be amended. Société des Produits Nestlé S.A. v International Foodstuff s Co 2013 JDR 2699 (GNP) Section 25 TMA does not apply to pending applications . Registrar is therefore free to approve any amendments of pending applications. Still recommended that Registrar apply principle when amending pending marks . A mark is judged as of the application date (registration), and it would be inappropriate to make significant changes to the mark's original form or specification of goods.

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Late renewal and restoration of registered trade mark - Section 37 + Regulation 26 & 27 Can be renewed for extra 10 years 10 years - from date of application Registered trade mark - in force for 10 years

2.3 - 2.3.1 What is a Mark? 18 19 18 Trade Mark Act (n3 above) sec 1. 19 Verimark v Bayerische Motoren Werke 2007 (6) SA 263 (SCA).

2.3.2 What is a trademark? Section 2 of Trade Marks Act defines a trademark as: …a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods and services connected in the course of trade with any other person . 20 In the definition above, colours have been used to separate each of the essential elements of a trademark. To follow will be a discussion thereof. ● sign capable of graphic representation. ● this term is not defined in the Act. However, the Act includes that provisions related to interpretation of the word, stating that the use of a mark shall be construed as the use of a visual representation, a container in the case thereof, and the use of an audible reproduction of the work in instances where the mark is capable of being audibly reproduced ● the owner must propose their intention to use the mark , even though it may not have been used before. ● it must be the intention of the applicant to use the mark in relation to goods and services, which is why if a mark is included in an independent work, it will be protected by copyright and not trademark. ● Case law emphasises the distinguishing and origin functions of a trademark, both of which must be present in order for this essential element to be fulfilled. o Distinguishing function = Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer, Inc. - trademark must enable consumer or end user to be able to distinguish product or service from others with another origin. 21 o O rigin function = Glaxo Group v Dowelhurst Ltd - trademark used to specify that the goods are from an indicated source, and that the proprietor is responsible for the goods and their quality. 22 20 Trade Marks Act (n3 above) sec 2. 21 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer, Inc. [1999] RPC 117 (ECJ) at 133. 22 Glaxo Group v Dowelhurst Ltd (No 2) [2000] FSR 529 (ChD).

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Note that all elements must be present for a trademark to be valid. 2.3.3 Special trademarks . Type of trademark Certification Collective Used to distinguish… …goods or services certified by trademark owner in respect of characteristics thereof. …goods of members of association from goods of persons who are not members. Trade Mark Act and registration s42 registration ● Application ● Statement articulating that applicant is not trading the goods ● Rules setting out conditions under which mark can be used and owner will certify goods or services, + characteristics that are to be certified. 23 s43(2) permits the indication of geographical names and origins in registration. 24 Owner of trademark Independent certifying body, NOT the person who trades goods. Associations that do trade goods. 23 Trade Mark Act (n3 above) sec 42. 24 Trade Mark Act (n3 above) sec 43(2).

2.3.4 Trademarks Under the Intellectual Property Laws Amendment Act 28 of 2013 (IPLAA) ● The IPLAA introduces new provisions into laws pertaining to intellectual property. ● Sections 7-10 of the IPLAA incorporates various new provisions into the Trade marks Act. ● Such provisions regulate the registration and use of ‘traditional terms and expressions’ and ‘geographical indications”. ● Traditional terms and Expressions is defined in section 8 (f) of the IPLAA as including “.. an indigenous term or expression and a derivative indigenous term or expression” 25 . These terms are also separately defined by the IPLAA: An indigenous term or expression as defined by the IPLAA: ● “a literary, artistic or musical term or expression with an indigenous or traditional origin and a traditional character, including indigenous cultural expressions or knowledge which was created by persons who are or were members, currently or historically, of an indigenous community and which is regarded as part of the heritage of the community.” 26 A derivative indigenous term or expression as defined by the IPLAA: ● “any term or expression forming the subject of this Act, applied to any form of indigenous term or expression recognised by an indigenous community as having an indigenous or traditional origin, and a substantial part of which was derived from indigenous cultural expressions or knowledge irrespective of whether such derivative indigenous term or expression was derived before or after the commencement of the Intellectual Property Laws Amendment Act” 27 . Geographical indication as defined by the IPLAA: ● “in as far as it relates to indigenous cultural expressions or knowledge, ... an indication which identifies goods or services as originating in the territory of the Republic or in a region or locality in that territory, and where a particular quality, 25 Intellectual Property Laws Amendment Act 28 of 2013 sec 8(f). 26 Intellectual Property Laws Amendment Act (n25 above) sec 8 (f)(d). 27 Intellectual Property Laws Amendment Act (n25 above).

reputation or other characteristic of the goods or services is attributable to the geographical origin of the goods or services, including natural and human factors.” 28 Section 9 of the Intellectual Property Law Amendment Act introduces section 43B into the Trade Marks Act. ● Section 43B (2): provides that a traditional term or expression is capable of constituting either a certification or collective trade mark or a geographical indication, ● Section 43B (3): provides that a traditional term or expression might be registrable as a certification or collective trade mark, but it must be capable of distinguishing the goods or services of indigenous communities in respect of which it is registered or proposed to be registered from the goods or services of another community or person, ● Section 43B (4) and (5): Provides for the registration of Geographical Indicators as certification or collective trade marks, ● Section 43B (6) – (8): provide for other requirements which must be met before the different types of traditional terms and expressions can be registered as trademarks or geographical indicators, These requirements are: ■ Prior informed consent must be obtained from the relevant authority or indigenous community. ■ Disclosure of the indigenous cultural expressions or knowledge must have been made to the Companies and Intellectual Property Commission. ■ A benefit-sharing agreement between the trade mark applicant and the relevant authority or indigenous community must have been concluded. 29 28 (As above). 29 Trade Mark Act (n3 above) sec 43B(1)-(8).

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IGZ 320 Group 9C Task 1 Co-created Notes

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