Distinctive Trademarks

Posted on Feb 2, 2010

Distinctive Trademarks

A word, device, symbol or sign that is distinctive, descriptive and/or recognisable by the consumer as an indication of the product’s origin. For this reason Trademark Law is concerned with establishing the most fair, effective, transparent and obvious system for the marketing of goods or services when conducted with the aid of the manufacturer’s insignia (or other recognisable identifying element).

Although the producer, distributor or manufacturer often use its own trade name as an indication of origin, trademarks go beyond the limited scope of trade names to address the application of other words, names, numerals, patterns, images, colour schemes, logos, ornamentation or devices (such as a container or packaging material) or any combination thereof.

In addition to the rigorous protection offered by the Trade Marks Act 194 of 1993, the common law (specifically that of unlawful competition) may also be applied to the regulation of trademark use in addition to (or as an alternative for) statutory protection.

Originally restricted to proprietary marks (an indication of ownership) affixed to livestock or cargo, the modern practice, of identification symbols on commercial goods or services, serve a much wider purpose aimed at identifying goods in trade. For this reason the Law of Trademarks regulates the use of any mark for purposes of trade (and not as an indication of ownership).

Today, trademarks perform several functions;

  • An indication of origin – to mark the source of the product
  • An indication of distinctiveness – to mark the product as different from similar goods or services
  • An indication of standard – to mark all products of the same proprietor as similar in quality of production/performance/status
  • An indication of promotion – to advertise the product and enable the recognition of a proprietor’s products

To qualify for protection under the Act, a proprietor must apply (and receive) registration of his trademark. It is however not necessary that the proprietor has made prior use of that mark. The mark will be protected from the moment it is registered. In lieu of registration, a proprietor’s mark is only protected by the common law.

In South Africa, an application for the registration of a trademark is examined to determine if it complies with the requirements of the Act. The law further allows for a process of opposition to the registration of a mark by any member of the public.

 The requirements for registration are:

  • The mark must fall within the definition of a trademark.
  • The mark must be capable of distinguishing the product in relation to which it is being registered.
  • Registration of the mark is not prohibited by the Act.

Registration of a mark will be prohibited if (inter alia) it is not capable of graphic representation, it is deceptive, it is not distinctive, it is merely descriptive, it is a generic mark, it contains protected state or official insignia or the application for registration was brought in bad faith.

The registration of a trademark lapses after 10 years, but is renewable upon application to the registrar (at a renewal fee) periodically for additional 10-year periods. A trademark will therefore remain on the register indefinitely, provided that it is consistently renewed.

Primary Infringement

After registration, the proprietor is entitled to defend the exclusive use of his mark by obstructing (the current or future use in trade or registration of) any mark that is identical or similar to the registered mark and used (in trade) for a product in the same category. However, to succeed with this action for primary infringement the Act requires that use of the mark is likely to cause confusion (in the mind of the consumer) or deception about the origin of the product.

Further Infringement

A registered trademark will also be infringed by the unauthorised use (in the course of trade) of an identical or similar mark applied to a product that is not in the same category (as the product for which the mark was registered) but merely a similar product (goods or services). Again, the Act requires that a likelihood of confusion or deception exists in order to succeed with the action for infringement.


The Act extends the protection of trademarks to proprietors with a reputation in South Africa despite the fact that their trademark is not registered locally (provided that it is registered in another country). In such cases, use of the same or similar mark (to the reputed mark) in South Africa will be prohibited if the infringing mark is:

  • Likely to take unfair advantage of the distinctive character or reputation of the registered mark, or
  • Likely to be detrimental to the distinctive character or reputation of the registered mark.

In the case of infringement by dilution, it is not necessary to show that the infringing mark is used in relation to goods or services for which the original mark is registered. It is further not necessary to show that there is any likelihood of confusion or deception, or that the infringing mark is used on similar goods.


A successful action for trademark infringement entitles the proprietor to:

  • An interdict to stop the use of the infringing mark and prevent future use,
  • A removal order to strip the infringing trademark from all products that display the mark,
  • Delivery (to the proprietor) of all products to which the infringing mark is permanently attached,
  • An amount of damages payable to the proprietor or
  • An amount equal to reasonably royalties that would (hypothetically) have been payable to the proprietor for the use of the mark.

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