Monday 9 July 2012

Darren Olivier

Trade Mark checklist - Part 1 - The Principles

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

As summarised by the UKIPO, are as follows:

(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b) the matter must be judged through the eyes of the average consumer of the goods/ services in question; who is deemed to be reasonably well informed and reasonably circumspect and observant - but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;

(e) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element in that mark;

(f) a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa;

(g) there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it;

(h) mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient;

(i) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

(j) if the association between the marks causes the public to wrongly believe that the respective goods or services come from the same or economically linked undertakings, there is a likelihood of confusion.

South African case law that has referred to European decisions that have caused the UKIPO to summarise the Principles as they have been referred to above include Adcock Ingram v Cipla Medpro (Sabel v Puma), Laugh it off Promotions v SAB (Canon v MGM), Puma v Global Warming (Marca Mode v Adidas) and Cowbell v ICS Holdings (Canon v MGM). Some of the Principles have not been considered under our law eg (e) which results from a unique case. Hopefully, the majority of the Principles will be like old hat to local practitioners.

Afro Leo's next post is to examine how they are applied in practice because this is where he believes we can benefit from the systemmatic approach of the Europeans.

Darren Olivier

Darren Olivier

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