Ten things to know
South Africa | Publication | September 2015
Trade mark registration gives the proprietor the right to exclusive use of the mark in respect of the goods or services covered by it. Possibly the most important reason for registration of a trade mark is the powerful remedies against unauthorised use. A trade mark registration allows the proprietor to sue for infringement and to obtain very powerful remedies such as interdict, delivery up infringing articles and damages. At the same time, the trade mark infringement provisions do not preclude a person.
A registered trade mark can be hypothecated as security, meaning that a registered trade mark can be pledged as security to secure loan facilities much the same way as immovable property can be bonded.
A very important reason for registration is to create the trade mark as an identifiable intangible property in the legal sense. Trade mark registration is a value store or receptacle of the value attaching to the reputation or goodwill that the product enjoys.
A common law trade mark attaches to the goodwill and, generally speaking, the goodwill is not severable from the business in its entirety. This has the practical effect that an unregistered trade mark will never have a separate and independent existence. It will always form part of the goodwill and it will always be attached to the business. The only way in which to acquire a common law trade mark is to acquire the business as a going concern. Trade mark registration, by contrast, can be transferred like any other asset owned by a person or a company.
A registered trade mark can be licensed. A trade mark licence can be recorded on the trade mark register, giving the licensee rights to institute legal proceedings in the event of infringement.
A registered trade mark can be transferred. The same is not possible for a common law trade mark, which can only be transferred with the business.
Trademark registration deters other traders from using trademarks that are similar or identical to yours in relation to goods and services like yours. By using the ® symbol, youput others on notice of your rights. Moreover, a registered mark can be found when others search the official register before choosing to commence using a particular name.
A trade mark registration is prima facie evidence of validity of the registration and the rights conveyed by registration. In legal proceedings relating to a registered trade marks the fact that a person is registered as the proprietor of the trade mark is evidence of the validity of the original registration of the trade mark, unless the contrary is proved.
Once the trade marks is registered the symbol ® or “R” or word “Registered” may be used for the goods and services listed in the registration.
A registered mark can be used as a basis to obtain registration in some foreign countries, facilitating protection of the brand worldwide as the business expands.
A registered trademarks empowers customs authorities at South African ports of entries to prevent the importation of counterfeit foreign goods. The Counterfeit Goods Act 1997 (CGA) affords the proprietor of an intellectual property right or anybody with an interest in goods bearing or representing such rights, to take civil or criminal action against a person or company that is involved in counterfeiting.
The CGA defines intellectual property as a registered trade mark or a well-known trade mark or copyright and any prohibited mark.
Publication
In two companion decisions, the Federal Court of Appeal has provided a sweeping review of the remedies for patent infringement in Canada and clarified the law concerning equitable relief (e.g., an infringer’s profits and injunctive relief).
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