How to select a “good” trade mark
This article was first published in Your Business Magazine June/July 2011 issue
Author: Emmie de Kock - 20 May 2011
Whenever starting a new venture or launching a new product, especially if such a new service or product will compete with similar existing products or services in trade, a new trade mark (“brand”) must be selected to distinguish the new product or service in the relevant market.
Although there are many marketing rules to follow in launching such new product or service, there are also legal rules to follow in selecting such proposed new trade mark. Two equally important legal rules for selecting a “good” trade mark are discussed below.
1. Check possible conflicts
The first rule is to try to avoid conflict with existing trade marks. When selecting a new trade mark you should not copy or select a mark which may be confusingly similar to a trade mark already in use. In this regard, considering the various tests for comparing trade marks, the proposed new trade mark should not be visually, phonetically or conceptually (sound, appearance, meaning) similar to any existing trade mark in the same industry.
Internet searches on public directories and search engines are by no means conclusive or reliable to provide this answer. Listings on internet websites may change or may be out of date. There is also not a law compelling traders to use the internet as medium to advertise, communicate or
list their contact details. However, the internet can certainly be a good starting point to determine what trade marks are already used in trade, and possibly not available as new trade marks. Google searches or searches on international name registers can also be useful.
In principle, if a trade mark is used on the internet by an overseas trader in the same sector, which can be accessed by South Africans, this does not necessarily mean that the same or a similar trade mark may not the available for use or registration by a South African trader. However, this statement is subject to certain provisions.
Although the accessibility of a website by internet is not conclusive proof of use of the name in South African trade, it remains accessible to South African consumers on the internet. This may cause confusion if search engine searches list your businesses in close proximity of
each other on lists relating to search results.
Another condition to the general statement above is that trade mark which are used by multi-nationals, which have perhaps not yet started trading in South Africa, or have not got around to registering their trade marks on the South African Register as yet, may be protected, even if their trade marks are not yet registered, merely on the basis that the trade marks are world famous and well-known for a specific product or service by South African consumers. The McDonald case resulted in the Old Trade Marks Act to being amended around 1995 and in this regard to include statutory protection for unregistered well-known trade marks in South Africa.
The best practice to determine whether a new trade mark will not be a copy an existing trade mark, or will be confusingly similar to an existing mark, is to instruct trade mark attorneys to conduct full availability searches on the Trade Marks Register. The South African Trade Marks
Register is not accessible to the public at present, and its online facilitates involve intricate trade mark knowledge in order to use and analyse properly.
When instructing such a search, also bear in mind that it is advisable to cross-check domain name registers and the Companies Registers, as these registers are not cross-checked and may give rise to common law rights in the same trade mark which could pose obstacles.
2. Comply with the Trade Marks Act
The second rule in selecting a trade mark is to make sure the proposed mark complies with the criteria set out in the Trade Marks Act to be registrable as a trade mark on the Trade Marks Register. Registration is necessary to ensure that exclusive rights are obtained on a national level
in the trade mark in relation to the specific product or service covered. The main criteria for the registration of a trade mark is that it must be capable of distinguishing the goods / services it covers from the same goods/services of another trader in the same trade. The more distinctive the proposed trade mark is, potentially the greater its strength, legally and commercially.
2.1 Not descriptive
When a proposed trade mark is a mark which describes the kind, quality, quantity, intended purpose, value, geographical origin, other characteristics and/or method or time of production of the goods/service for which registration will be sought, such proposed trade mark will not be registrable. For example, in 2000 the Supreme Court of Appeal held that the mark LIQUORICE ALLSORTS is descriptive of the products and that the mark cannot be registered or monoplised by any one trader in the sector selling “liquorice”.
2.2 Not common in trade
Words which are commonly used, or reasonably required for use, in a specific sector by traders, should not be registrable as a trade mark on their own.
An example of a term which was held by the appeal court in 1992 to be a term commonly used in the cosmetic trade is the word “BEAUTIFUL” on its own. In this regard, Estee Lauder applied to register and obtain monopolistic rights in the term BEAUTIFUL on its own in relation to a perfume product.
Generally, new proposed trade marks should also not comprise surnames per se, as it can be arguable that such monopoly in a surname in a
specific sector may be unfair. Surnames are often used in relation to names of businesses offering professional services. As many formal professions have strict rules on marketing and the adoption of business names, this can create limitations on available business names. A possible solution is then to combine your trading name with distinctive matter to assist the consumer in identifying and distinguishing your business.
It is also generally prohibited to register a trade mark which consists solely of a geographical term, as geographical terms are generally common and necessary to use in trade.
Letters of the alphabet and numbers are also elements which must be available for use by all traders. However, in principle, it should be possible to register a trade mark comprising unique combination of letters and numbers. It is best to represent such letter or number trade marks in distinctive logos or special fonts to make it sufficiently distinctive.
2.3 Not generic
Although it may seem a good marketing plan to select a name for your products or services which is generic, it is not a good idea from a trade mark legal perspective. In this regard, marks which are regarded as being generic in a specific industry should not be registrable and may later be
removed from the Trade Marks Register if it becomes a generic term after it has been registered. General examples of terms which used to be trade marks once, and became generic terms, include ASPIRIN, HOOVER and CELLOPHANE. Further, in 2009, in an appeal case between online-lottery services v National Lottery Board, the court held that the term “LOTTO” should no longer be registered on its own as a trade mark, as it is a generic term.
2.4 Not state symbols
Although it may be permitted to use the national flag in some instances in trade, proposed trade marks containing any state symbols and patronage, including the national flag of South Africa, symbols and emblems of any country and/or certain recognised international organisations are not registrable as trade marks and in some instances are prohibited marks for use.
2.5 Not infringing other rights
Your proposed new trade mark should also generally not be in conflict with rights of others based on, for instances, copyright, contracts (including restraints of trade), common law rights or personality rights.
2.6 Not offensive
Your proposed new trade mark should also not be offensive in any official language used in South Africa. The Trade Marks Act expressly
prohibits the registration of any mark which is offensive to any class of people. It should thus be borne in mind that there are many religious beliefs and many diverse cultures. The criteria may pose practical problems in the sense that the search facilities available at the South African Registry cannot at present conduct conceptual searches for all official or international languages. Generally, swear words should not be used as it offends against public morality.
2.7 Not confusingly similar to other marks
A very distinctive mark will be more difficult to be imitated by competitors. Exposure by advertising will also establish consumer identification more easily. The doctrine of “imperfect recollection” also applies in trade, which means that consumers are not likely to necessarily accurately
remember advertising matter when they encounter the product with the same or similar name in trade.
However, the test whether trade marks are confusingly similar can be very subjective. Trade marks are compared on a phonetic, conceptual and visual basis. If a proposed new trade mark is regarded to be confusingly similar to a prior registered trade mark on any of these levels, conflicts may arise. Trade marks are further compared holistically and as wholes. Case law gives helpful guidelines.
For instance, in 2010, in the case between Century City Apartments Property Services CC and another v Century City Property Owners’ Association the Supreme Court of Appeal ruled that the trade marks CENTURY CITY and CENTURY CITY APARTMENTS is confusingly similar and should therefore not be allowed to co-exist.
In a previous other case, the court ruled that the trade marks POWER and POWER HOUSE may co-exist in the clothing sector. In another case it was held that the trade marks ROMANY CREAMS and ROMANTIC DREAMS are also not confusingly similar for biscuits.
The conceptual similarity test was applied in a case relating to milk products and the court held that COWBELL and DAIRYBELL are in principle sufficiently dissimilar.
2.8 Not in bad faith
A person who is not the true owner of a trade mark, should not be allowed to obtain registration and monopolistic rights in a that trade mark. For instance, former employees and franchisees, should not adopt the trade marks of their former employees or franchisors of which they are clearly not the true and bona fide owners.
2.9 Not prohibited marks
In terms of Section 15 of the Merchandise Marks Act 17 of 1941, the Minister may from time to time give notice in the Government Gazette of marks which are absolutely, or conditionally, prohibited for use. Examples of words, letters, letter combinations, initials and devices that have been prohibited in terms of this subsection, include the peace-sign, a specific depiction of a Protea flower and the WORLD WILD LIFE FUND phrase. The Minister has also prohibited the use of a number of emblems relating to the 2010 FIFA World Cup in South Africa.
2.10 Not copy of a well-known mark
When a trade mark is used globally, and becomes well-known amongst the likely consumers for relating to the product or service connected to the trade mark, such trade mark could qualify for additional protection in terms of the Trade Marks Act as a “well-known” trade mark. Well-known trade marks may be protected in South Africa regardless of whether they are registered on the South African Trade Marks Register. It is never a good idea to adopt, incorporate or use a trade mark which is well-known based on global and extensive exposure via marketing.
2.11 Not limiting trade
If you are considering a trade mark which will consist solely of a shape, configuration, pattern or one colour, your proposed new trade mark will generally not be registrable and it will not be possible to obtain a monopoly in such trade mark if the mark is necessary to obtain a technical result or results from the nature of the goods themselves. For instance, many pharmaceutical companies aim to market the shape or colours of their products as trade marks. In the case between Beecham Group PLC and Others v Triomed (Pty) Ltd, in 2002, the Supreme Court of Appeal held that Beecham could not retain a monopoly in a white oval shaped trade mark for antibiotics.
When selecting a new trade mark, it must be borne in mind, that apart from marketing rules, there are also legal rules. It is important to
spend time considering and examining possible legal consequences of a proposed new mark before such mark is adopted for use or registration as a trade mark on the Trade Marks Register.
Trade mark law can be complex and it is best to consult with an expert attorney before trade marks are adopted for use or registration is applied for. Many trade mark conflicts and disputes can be avoided between traders, if proper availability searches are conducted to
assess the possible risks. Because trade mark law is a specialised area of law, such legal proceedings could usually be more expensive than general legal proceedings.
Please note that the above remarks are not meant as formal legal advice and is merely provided as general information. Each case should be
fully considered by an attorney with appropriate knowledge and experience in trade mark law.