This mini-dissertation is submitted for review by NWU in partial fulfillment of the requirements for the LLM degree in International Trade Law. Joint Recommendation World Intellectual Property Organization Joint Recommendation on Provisions for the Protection of Well-Known Marks, 1999.
Introduction
- Research question
- Research aim and objectives
- Scope and limitations
- Research method
- Framework
For a trade mark to be protected under section 35, it must be known to the relevant sector of the public within the meaning of section 35(1A) of the Act. I also discuss the scope of protection in terms of the Constitution (with reference to relevant case law), the Act and international conventions, including the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994 (hereinafter the TRIPS/TRAVEL Agreement ).
Trade mark protection
What is a trade mark?
Furthermore, the registration of a mark as a trademark is further subject to the exclusions mentioned in section 10 of the Act. The discussion in part 2.3.2 below sets out further comments on the distinctive function of a trademark.
The functions of a trade mark
- The origin function
- The distinguishing function
- The advertising function
- The quality guarantee function
In other words, the advertising function aims to increase sales of the goods or services bearing the mark. The advertising function of a trademark is reflected in Section 34(1)(c) of the Act, which deals with infringement of a registered trademark with a reputation.
Trade mark protection in terms of the Constitution, legislation and the
- Constitutional protection
- Trade mark protection in terms of the Act
Section 27, subsection 5, protects well-known trademarks according to the Paris Convention against deletion from the trademark register, even if the trademark owner does not intend to use the mark or has not used the mark as stipulated in § 27, subsection a) and/or (b) in the Act. The effect of TRIPS § 16, subsection 3, on well-known trademarks is the same as the act's section 35, subsection Section 14 of the Act, subsection 1-2, however, provides a defense against a lawsuit to remove a trademark from the registrar or prohibit its registration in accordance with § 10, subsection of the Act.
With the addition of section 35(1A), the legislature intended to extend the protection afforded by the common law action of passing on to businesses abroad which do not carry on business or enjoy any goodwill in the Republic, provided their mark the required degree of reputation in the Republic in terms of section 35(1A) of the Act.230.
THE TERRITORIALITY PRINCIPLE AND ITS EFFECT ON THE
The origin of and rationale for the territoriality principle in trade mark
As part of the Uruguay Round of trade negotiations pursuant to the General Agreement on Tariffs and Trade of 1947 (hereafter the ATT), the TRIPS was drafted to supplement the protection granted under the Paris Convention. The needs of the population can also be detrimental to other countries as explained immediately below. 101 In terms of the Counterfeit Goods Act 37 of counterfeit goods" means goods which are the result of counterfeiting, and includes any means used for purposes of "counterfeiting". a) means, without the authority of the owner of any intellectual ownership exists in the Republic in respect of protected goods, the manufacture, manufacture or manufacture, whether in the Republic or elsewhere, of any goods by which those protected goods are imitated in such a manner and to such an extent that those other goods substantially identical copies of the protected goods;.
International uniformity could also be threatened by regulations based on political considerations (although generally not so important, uniformity will be a problem in terms of protecting well-known brands) due to the large differences in needs.
Limitations on the application of the territoriality principle prior to the
Under the earlier law, copying someone else's ideas by adopting someone else's foreign trade mark would only have been considered illegal if it was accompanied by "something more."108 The concept of what constitutes "something more" was considered in Victoria's The Secret case, where reference was made to the Moorgate Tobacco v Philip Morris case. 34;something more" was dependent on the factors that might have "injured or tainted" the borrower's right to or ownership of the owner of the trademark in question. Relevant factors to determine whether there is "something more" that may have revoked the application of the principle of territoriality, would include aspects such as dishonesty, breach of trust, sharp practice or the like. 109.
On this basis, Truworths pursued the registration of the foreign trade mark in its own name in South Africa and applied for the removal of the foreign proprietor's Primark trade mark registration in South Africa on the basis of the non-use provisions of the Act. .112 The court held that although this practice of borrowing another's brand or label may be disturbing to the average intelligent reader,113 it is not necessarily considered illegal even if it borders on causing deception.114 Thus, in the absence of "something more", the principle of territoriality prevails, although deception or confusion remains a possibility.115 The reason for the Court's rationale for allowing such a practice was to avoid the unnecessary restriction of trade in goods or services in one country, the start of which happened to be similar or was similar to that in another country.116 The court's reasoning was further supported by the fact that there is no legitimate reason why a customer should be deprived of access to legal goods or services that imitate goods and services. of another foreign trademark.117 Consumer access to goods is thus an important consideration in relaxing the strict application of the principle of territoriality.
The need to move away from a strict application of the territoriality
Second, Article 2(1) of the Joint Recommendation provides factors for determining whether a mark is well known. The factors in Article 2(1)(b) are:. a) The degree of knowledge or recognition of the brand in the relevant public sector. In the sense of Section 35(1A) of the Act, goodwill is not a requirement for the protection of a foreign trademark.
Further research in terms of "the relevant sector of the public" may benefit potential readers.
The protection of well-known trade marks in terms of
The Paris Convention
- Background
- The shortcomings of the Paris Convention
Rather than providing for a system of international trademark registration, the Paris Convention recognizes to some extent the principle of territoriality.136 However, the recognition of the territoriality principle is limited as the Paris Convention provides protection to well-known trademarks by bringing infringement proceedings to object against the unauthorized use of a trademark with a reputation and to object to the unauthorized registration of trademarks with a reputation in the Member States.137. The limited recognition of the territoriality principle in relation to trade marks is largely due to the criticism leveled at strict application of this principle for the reasons set out in Chapter 3. 136 In order to ensure that a trade mark is protected in the Member States of the Paris Convention requires Article 6(1) thereof that the holder fulfills the requirements for protection in each of the Member States concerned.
The main purpose of WIPO, which is a specialized agency of the United Nations, is to provide international protection to IP and to administer international agreements (including, inter alia, the Paris Convention) through cooperation between states.141 As part of their duties, the WIPO Committees tasked with carrying out international harmonization of trademark laws and procedures.142.
TRIPS
- Background
- The shortcomings of the Paris Convention and TRIPS regarding the
This is consistent with the protection from the third paragraph of Article 35 of the Act, which protects well-known trademarks for goods and services. This part of section 16(2) has been incorporated into section 35(1A) of the Act, as explained in Part 5 below. However, there is a difference between the protection afforded to well-known trademarks in terms of Article 35 of the Act and Article 3(16) of TRIPS.
Although both the Paris Convention and TRIPS currently explicitly grant protection to foreign well-known trademarks, neither instrument sufficiently elaborates the meaning of the term "well-known".
The Joint Recommendation
Article 2(1)(b) of the Joint Recommendation provides a non-exhaustive list of factors that may indicate whether a trade mark is well known. Thus, the competent authority has the discretion to consider relevant information and evidence submitted by the foreign owner in support of the well-known character of its mark in South Africa. The first mentioned factor is similar to that in s 35(1A) of the Act, which provides that knowledge of the trade mark in any relevant sector of the public is significant, but potentially wider than it.
Such additional factors may be relevant alone or in combination with one or more of the factors listed [in the joint recommendation].164.
The protection of well-known trade marks in terms of the Act
This is because section 35 of the Act contains a more in-depth discussion of how a mark qualifies as well-known. In terms of South African trademark laws, the former prerequisite is reflected in section 35(1A) of the Act, which explicitly protects well-known trademarks. However, this may be irrelevant to the protection of well-known trademarks in South Africa, as protection extends to service marks within the meaning of section 35(3) of the Act.
A certain degree of similarity is required between the goods of a well-known brand and a locally copied brand.
THE INTERPRETATION OF THE RELEVANT SECTOR OF THE
Relevant provisions of the Joint Recommendation
The test contained in section 35(1A) of the Act reflects the same in respect of the joint recommendation. The first factor (awareness of the trade mark) mentioned in the joint recommendation is worded in the same way as that in section 35(1A) with the addition of the word "recognition". However, it can be argued that the first factor under section 35(1A) is similar to, but more restrictive than, the first factor in the joint recommendation.
It is important to note that the holder's nationality, domicile or place of business is irrelevant to the decision under section 35(1A).183 of the Act.
Identifying the relevant sector of the public
- The McDonald’s-case
- The Gap-matter
- The Truworths-case
- The relevant sector of the public must be interested in the goods or services for
- Factors affecting the relevant sector of the public
- The requisite degree of awareness within the relevant sector of the public
191 Since these types of fast food products were relatively cheap, the relevant sector of the public would have been large. Truworths' argument that the relevant sector of the public were all South Africans interested in clothing was considered too broad, as not everyone could afford clothing sold by Primark Holdings. Primark argued that the relevant sector of the public were those better educated and more affluent members of society.
If a significant number of persons in the relevant sector of the public are aware of the foreign brand, the required level of awareness would be achieved.
Spill-over advertising and knowledge which has been obtained as a
The court accepted this evidence of promotion of the mark to conclude that a sufficient. Evidence that a significant number of people in the relevant sector of the public have acquired knowledge can also be established through a market survey. Before proceeding to the discussion of the market survey, it is important to note the factors outlined in the joint recommendation.
The larger the area of recognition, the greater the chance that the brand will be recognized by a significant number of people in the sector concerned. This was done to demonstrate that the Primark brand was unknown to a significant proportion of the relevant sector of the public. World Intellectual Property Organization Joint Recommendation on Provisions for the Protection of Well-Known Marks (1999).
