Trade Mark checklist - Part 1 - The Principles

Trade Mark checklist - Part 1 - The Principles

By Darren Olivier   Monday, July 09, 2012   No comments:

Following last week’s post “10 reasons to adopt the European Approach” to trade mark infringement proceedings, Afro Leo promised to provide a checklist.

This is Part 1 - the Principles.

The most common of the infringement provisions based on an earlier mark states as follows (Section 34: SA Trade Marks Act 1993):
The rights acquired by registration of a trade mark shall be infringed by the unauthorized use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion.

The wording of the European Harmonization Directive (Article 5), the UK Trade Marks Act (S10/S5) is very similar as is the opposition provisions in the South African legislation (S10).

The Principles - Likelihood of Confusion

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Notoriety for general use: Trade Marks

Notoriety for general use: Trade Marks

By Darren Olivier   Tuesday, March 08, 2011   1 comment:

The excellent Class 46 posted (per Robert Börner) a summary of a decision of The German Federal Patent Court rejecting an application of the term "TELFEXAN" for "industrial chemicals" in Class 1 due to an opposition based on the earlier trademark "TEFLON" being registered for identical goods.

The relevance of the decision to readers of this blog is that it shows the importance of evidence of use (not evidence to get protection under passing off or famous marks type legislation but evidence to show that a mark with a high degree of distinctiveness gets wider protection) in trademark oppositions, infringement cases and for overcoming citations not only in RSA but in all African countries that use the European tests (Sabel v Puma, Cannon etc). For RSA, see for instance the Cowbell AD decision adopting these tests.  

The African decisions that Afro Leo has read indicate that attorneys very rarely rely on evidence of use in this way.

"The German Federal Patent Court (Bundespatentgericht) recently rejected an application of the term "TELFEXAN" for "industrial chemicals" in Class 1 due to an opposition based on the earlier trademark "TEFLON" being registered for identical goods.  

Despite the (according to the opinion of this class 46 member rather strong) differences between the signs, the court stated an overall risk of confusion due to the very high distinctiveness of the earlier sign. 

The sign  "TEFLON" allegedly forms a traditional trademark of the opponent being strongly used over the last decades (which had apparently been sufficiently substantiated by the opponent).  Interestingly the court explicitly stated that the decision with respect to a risk of confusion would have been different if  - the goods had not been identical or  - the earlier sign did only have an average distinctiveness."

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