The Trade Marks Act of 1993 defines a trade mark is a mark that is used or proposed to be used in a course of trade and is capable of distinguishing goods or services. According to common law, the extensive use and promotion of a mark may afford the owner/trader rights to the said mark. The Trade Marks Act is one of the numerous pieces of statutory legislation that directly affect advertising in South Africa. Legal remedies of passing off and unfair competition emanating from common law have played a major role in the regulation of advertising.
The Advertising Standards Authority (ASA) allows traders to participate in comparative advertising subject to the provisions and requirements of the Trade Marks Act. In the event that such advertising causes damage to the reputation and goodwill of another trademark, confusion or deception it may constitute trademark infringement.
1. Trade mark Infringement in unlawful competition
The false representation made by one trader to the public that the goods or services of another trader belong to him or that they are connected to him is a common form of unlawful competition called passing off. This act could potentially infringe on the right to goodwill of the trader in the second instance. This type of misrepresentation is likely to confuse the public regarding the source of origin of the goods being advertised
Passing off can damage the goodwill of the other trader and jeopardize the opinion that the purchasing public has for his goods or services.
Trade Dress- An example of Passing off
Trade dress refers to the visual and physical characteristics of a product. Trade dress is also capable of distinguishing the product and therefore can be protected under Trade Mark law. These characteristics can include the three-dimensional shape, graphic design and colour of the product. This means that a trader may seek protection for the colour, design as well as shape of the product.
2. Trademark Infringement in Comparative Advertising
In the Verimark V BMW AG case, the court held that, in order to be infringing, the use of the mark in question must be used as a badge of origin and not just incidental use. Comparative brand advertising that causes deception or is confusingly similar to another trademark may constitute infringement. In circumstances where such advertising includes the use of a mark to take unfair advantage of the reputation of a registered trademark, it may also constitute infringement.
3. Legal Remedies
The owner of the trademark that is alleged to be infringed may approach the courts in the manner prescribed in the Trademarks Act, for an interdict to restrain the advertiser from continuing with the act of infringement. In the event that the owner is able to prove damages suffered then the court may grant relief for damages suffered.
