Category Archives: Trademark

Can I trade mark a phrase that is similar to another brand?

When a trade mark (brand name, slogan or logo) has been registered, nobody else can use this trade mark, or one that is confusingly similar. If this happens, legal action may result. The Companies and Intellectual Property Commission (“CIPC”) administers the Register of Trade Marks, which is the record of all the trade marks that have been formally applied for and registered in South Africa.

PepsiCo Inc v Atlantic Industries

Atlantic Industries Is the registered proprietor of the trade marks TWIST, LEMON TWIST and DIET TWIST in relation to non-alcoholic drinks. PepsiCo applied to have these marks expunged and applied for the registration of the word mark PEPSI TWIST and of a device mark incorporating the words PEPSI TWIST. PepsiCo applied for the expungement of Atlantic’s marks on the basis that the word ‘Twist’ was not capable of distinguishing a proprietor’s goods and was purely descriptive. The Supreme Court of Appeal (“SCA”) rejected these contentions, finding that the word ‘Twist’ in relation to non-alcoholic drinks was an arbitrary non-descriptive word and that any association with non-alcoholic drinks was at most allusive or metaphorical. There was in any event overwhelming evidence that through extensive use the mark TWIST had become distinctive of Atlantic’s beverages.

Regarding PepsiCo’s application for the registration of its marks, the SCA held that the incorporation, in the proposed marks, of the sole distinctive feature of Atlantic’s marks, namely TWIST, was likely to deceive or cause confusion as to the origins of the beverages manufactured by Atlantic and PepsiCo respectively. The likelihood of deception or confusion was not avoided by inserting PEPSI before TWIST because the latter word played an independent distinctive role in the composite sign.

Conclusion

Whether or word is purely descriptive or not, is irrelevant when considering the word’s relation to a company’s brand or product. Once a phrase or word becomes associated with a product, it will be very difficult, if not impossible, to expunge and trade mark that word or a similar phrase.

References:

  • PepsiCo Inc v Atlantic Industries (983/16) [2017] ZASCA 109
  • Companies and Intellectual Property Commission | CIPC | http://www.cipc.co.za

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice. Errors and omissions excepted (E&OE)

Company Slogans: How much of it is Intellectual Property?

Slogans are key elements in advertising campaigns as brand owners hope that the public will associate the slogan with their products or services and, therefore, to their brand. For this reason, the question of protection is of high importance.

What is a trade mark?

A slogan is a short phrase or a sentence that a company uses to identify itself or its products. It identifies the services or goods of one person and distinguishes it from the goods and services of another. An example would be Nike’s slogan, “Just Do It”.

  1. Once a slogan has been registered as a trade mark, nobody else can use it, or one that is confusingly similar. If this happens, legal action may result.
  2. A trade mark can only be protected as such and defended under the Trade Marks Act, 1993 (Act 194 of 1993) if it is registered. Unregistered trade marks may be defended in terms of common law. The registration procedure results in a registration certificate which has legal status, allowing the owner of the registered trade mark the exclusive right to use that mark.

CIPC administers the Register of Trade Marks which is the record of all the trade marks that have been formally applied for and registered in the Republic of South Africa.

What can be registered as a trade mark?

If you want to register a slogan, you must first consider of the slogan in question serves the purpose of distinguishing the goods/services of one trader from those of another trader.

  1. It must not be a customary, everyday phrase that is common for people to use in your field of trade.
  2. It can’t be representations of protected national emblems, such as the national flag or a depiction of a national monument, such as Table Mountain.
  3. It must not be offensive or contrary to the law or good morals or deceptive by nature or way of use.
  4. There are no earlier conflicting rights.

An example of a slogan or phrase that can’t be registered as a trade mark is “24 Hours”, since the expression is reasonably required for use by other traders. If a phrase like this was trade marked, the owner of the registration would acquire the exclusive right to use this phrase and thereby prevent all other traders from using it, which is unreasonable and therefore cannot be allowed.

References:

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice. Errors and omissions excepted (E&OE)

Domain names and intellectual property

There is often confusion when it comes to registering domains names and intellectual property. The reason for this is simple – when a company needs to decide on a domain name, it generally chooses one of its own trade marks. However, it might be that someone else has already registered a domain name that is similar, or the same, as a company’s trade mark.

As a result, the issues that surface in trade mark disputes often crop up in domain name disputes too. However, the court has already recognised that trade mark principles are applicable in domain name disputes.

Who handles domain name disputes?

When domain names first appeared on the scene, disputes as to who was entitled to the registration of a particular name were handled by the courts, usually by way of trade mark infringement or passing-off proceedings.

  1. But now there are Alternative Dispute Resolution (ADR) procedures that relate to the various domain names.
  2. So, for example, disputes regarding ‘.co.za’ domain names are handled by way of the ADR procedure that was established by the Regulations passed under the Electronic Communications and Transactions Act (ECT Act) 25 of 2002.

When does a domain name have trade mark infringement?

An example of a case which deals with the issue of domain name registrations and trade mark includes kingo.co.za and kingonumbers.co.za.

  1. It was found that, even though the registrant had got in first with a domain name registration (kingonumbers), the complainant, Kingo, had stronger rights to the trade mark Kingo through use, and Kingonumbers would be seen as a natural extension of Kingo.
  2. The review court used this quote from the panel's decision: The crux of this decision is who owns “Kingo”? It is settled law that the person who has appropriated a mark for use in respect of goods or services as a trade mark, may claim to be the proprietor.

When it comes to domain names, if a name has been trade marked by someone else, then you shouldn’t try using it. It would be like registering a domain name such as nikeshoes.co.za – You would be treading on thin ice. However, if your chosen domain name has not been trade marked, then it shouldn’t be a problem, even if another company would seem to benefit from your registered domain name. For instance, registering a domain name such as greatshoes.co.za would not be a trade mark violation if “great shoes” has not be trade marked. If another shoe company wanted to use that domain name, they would have to buy it from you or find another.

Reference:

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice. Errors and omissions excepted (E&OE)