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Trade mark registration: a ‘stitch’ in time saves nine

Why Google is fine but ‘The Look’ isn’t.

The cost and effort involved in registering a trade mark far outweighs the expense involved in fighting infringement of unregistered trade marks, says Janine Hollesen, director specialising in intellectual property law at Werksmans Attorneys.

But not all marks can be registered as trade marks, as Truworths found out when the Supreme Court of Appeal (SCA) ordered the de-registration of its ‘The Look’ trade mark.

This followed a dispute with rival clothing retailer Ackermans, which used the phrase ‘The look for less’ in its marketing.

Truworths had already registered ‘The Look’ as its trade mark, and sued Ackermans for trade mark infringement. Ackermans, however, maintained that ‘The Look’ could never function as a trade mark and should be struck from the Trade Marks Register.

“As a result, and as part of its defence, Ackermans filed a counter-application for the cancellation of the Truworths ‘The Look’ trade mark registration on the basis that the mark should never have been registered in the first place as it did not qualify as a trade mark,” says Hollesen.

Ackermans succeeded on appeal and ‘The Look’ was once again available to the whole fashion industry for lawful use.

“In order for a trade mark to be registered it must be able to distinguish the goods or services of one party from those of another. A trade mark must be either inherently distinctive at the date of application, or must acquire distinctiveness through use,” Hollesen says.

A word that is easy to distinguish – ‘Google’, for example – would more readily qualify for registration than a common noun such as ‘hamburger’.

Trade marks are registered in 45 classes, and while ‘Apple’ would be too general to qualify for registration in the class for fruit, is does distinguish computers sold under that mark and therefore is capable of registration in that class.

Hollesen says that, in terms of the Trade Marks Act, a trade mark can be: “Any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or combination of the aforementioned.”

It could even include a distinctive jingle associated with a specific business like the well-known MacDonald’s ‘I’m loving it!’.

Hollesen says in cases of trade mark infringement, the infringers more easily refrain from their infringing conduct in the face of a registration certificate to prevent costly litigation.

While common-law rights attach to unregistered trade marks, the holder of such trade marks would be required to provide proof to the court that they have a reputation in the mark which attaches to their business – something that could otherwise have been dealt with by merely producing the registration certificate.

Registration certificates could simplify and speed up the settling of trade mark disputes before administrators of social media platforms such as Facebook, Twitter and Instagram, as well as disputes about domain names lodged with the South African Institute of Intellectual Property Law and its international counterpart the World Intellectual Property Organisation.

In terms of the Counterfeit Goods Act, a registered trade mark can be registered with the customs authorities to curb counterfeit goods entering the country.

Customs officials would contact the rights holder to inform them of any goods carrying the mark entering the country, and steps can be taken to seize and ultimately destroy such goods should they indeed be counterfeit.

Hollesen points out that trade mark registrations can add value to a business since they can be transferred if the business is sold, whether as a whole or a specific business unit. They can also be licensed to third parties in exchange for royalties.

The cost of registering a trade mark isn’t excessive compared to the benefits of doing so, says Hollesen – and can last forever if properly maintained by paying the renewal fees which are due only every 10 years.

Trade mark registration is, however, territory-specific and companies are advised to make sure they register in all countries where they do business or plan to in future.

Brought to you by Werksmans Attorneys.

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