TRADE MARK ARTICLES BY louis-THE-lawyer: INSERT #7 - LIMITATIONS ON TRADE MARKS YOU MAY REGISTER
There are various prohibitions and limitations on your choice of a trade mark – it is imperative that you take note of these before you get passionate about a word, phrase or logo that you (and/or your associates) would like to use and/or register as it could save you a lot of time, heartache and money.
These challenges can broadly be categorized as absolute whereas others may be marginal and may be allowed by the trade mark registrar subject to certain disclaimers.
Here are a few (i.e. it is not an exhaustive list) of the primary prohibitions and limitations you should bear in mind:
- It (i.e. the trade mark) is not be capable of distinguishing your products or services
- It is commonly used in trade and industry
- It is or may be confusing especially with reference to similar existing trade marks
- It immoral, offensive or in breach of the law
- It depicts or contains international flags, symbols or national monuments
- If you have no bona fide intention to use or right to claim ownership
- It is false and misleading - in this context is must be noted that - South Africa’s food, alcohol and agricultural laws all contain a similar provision prohibiting the use of false and/or misleading descriptions of the relevant commodity. These prohibitions extend not only to descriptions that are applied to the labels of these commodities but also extend to the advertising thereof.
Let’s consider a court case which addressed the issue of confusion – this arose in the following case - A jeweller called Shimansky has a trade mark registration for the mark Evolym for jewellery. A competitor called Browns, The Diamond Store, started using the trade mark Evolve for jewellery. Shimansky instituted an infringement action arguing that the two names are confusingly similar - below is a very brief extract of some of the key issues focussing on the ‘’test’ the courts will apply:
You must take the two words. You must judge them, both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy those goods
The impact which the defendant's mark would make upon the average type of customer who would be likely to purchase the goods
This notional customer must be conceived of as a person of average intelligence having proper eyesight and buying with ordinary caution.
The comparison must be made with reference to the sense, sound and appearance of the marks.
The marks must be viewed as they would be encountered in the market place and against the background of relevant surrounding circumstances.
The marks must not only be considered side by side, but also separately.
Is there a reasonable likelihood of confusion if both are to be used together in a normal and fair manner, in the ordinary course of business?
Applying the above, the judge found in favour Browns and concluded that there was no likelihood of confusion, essentially for the following reason: ‘As jewellery is an expensive product, the likely customer is a discerning one, someone who is unlikely to be as easily confused as the purchaser of a cheap supermarket item’
An extract from another case namely Dinnermates (Tvl) CC v Piquante Brands International (Pty) Ltd and Another is worth noting:
There must be "consideration of the main or dominant features of the marks in question ... as they would likely impact on the mind of the consumer"
My next insert will deal with the use of keywords
I would like to acknowledge information and inspiration of Spoor & Fisher
© ADV LOUIS NEL
t/a Louis-THE-lawyer
May 04 2025
DISCLAIMER - Each case depends on its own facts & merits - the above does not constitute advice - independent advice should be obtained in all instances
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