Search for notes by fellow students, in your own course and all over the country.
Browse our notes for titles which look like what you need, you can preview any of the notes via a sample of the contents. After you're happy these are the notes you're after simply pop them into your shopping cart.
Document Preview
Extracts from the notes are below, to see the PDF you'll receive please use the links above
TRADE MARKS
{Note: This summary is based on Chapter 2 of the textbook (Unit 2 of the Study
Guide)
...
This
summary is not a complete set of notes and students must supplement this summary
with their own notes and reading from the textbook
...
The law relating to trade marks in SA is governed by the Trade Marks Act 194 of 1993
(the Trade Marks Act)
...
•
Holding of trade mark registration is a form of ‘insurance’ against possible
abuse of the goodwill
...
e
...
•
Legal assets are created which may be sold and used under licence
...
•
Because of their commercial value, trade marks may also be used to secure
debt
...
For example, Nike
is used for clothing, Standard Bank is used for financial services, Coca Cola for a
beverage etc
...
Trade marks are classified into 45 classes the first 34 classes relate to goods and the
eleven remaining classes are classified into services
...
These
classifications are administered by the World Intellectual Property Organization
...
One of the main reasons for the
need for classification is to facilitate the conducting of trade mark registrability and
infringement searches
...
It is however advisable to carry a search to avoid potential
infringements
...
•
Translations of marks especially into official languages
...
•
Marks with the same prefixes and /or suffixes in the relevant classes should be
compared
...
Registration Procedure
1
...
Examination
3
...
Official Action Compliance
5
...
Advertisement in the Patent Journal
7
...
Issue Certificate of Registration
Nature and Essence of a Trademark
A trademark is in essence, a mark which distinguishes one trader’s product or service
from a similar product or service of another trader
...
A mark, on the other hand, is any sign capable of being represented graphically,
including a device, name, signature, word, letter, numeral shape, configuration,
pattern, ornamentation, colour or container for goods or any combination of the
aforementioned
...
In Canon Kabushiki Kaisha the court stated that “the function of the trade mark is to
guarantee the identity of the origin of the marked product to the consumer or end user
by enabling him without any possibility of confusion to distinguish the product or
service from others which have another origin
...
Certification mark must
distinguish the goods and serviced certified by the trade mark owner
...
Collective Trademarks
A trademark that distinguishes the good of persons who are members of an
association from the goods of person who are not members thereof
...
Trademark Registration and Formalities
Trademarks are territorial- registration only grants rights in the country in which the
trademark is registered
...
Registrability of Trademarks
Section 9 and 10 of the Trademarks Act set out the criteria which a trademark have to
meet in order to qualify for registration
...
•
They must be capable of distinguishing inherently or through prior use
•
They must be capable of so distinguishing either generally, or through use
within limitations
...
Capable of distinguishing inherently or through prior use
•
Through inherent qualities and characteristics, or it can become distinctive
through use
...
•
For example, trademarks such as XEROX and KODAK are such names
...
•
Some instances no amount of prior use will render a mark or part of mark
sufficiently distinctive to qualify for registration
...
•
In some cases, no amount of prior use may sufficiently qualify for registration
(See the Estee Lauder Cosmetic Ltd v Registrar of Trade Marks)
•
The court held that the word beautiful cannot qualify no matter what the extent
of the prior use was
...
•
Word such as excellent, very good or first class are such words
...
•
Transmission is the passing of ownership of trademark by operation of the law
...
•
Rectified on ground that its entry was wrongly made or wrongly made on the
register
...
•
Trademarks that are not used may be cancelled
...
Defences: Section 34(2)
Remedies: Section 34(3)
Passing Off
Passing off occurs where a trader misrepresent that its goods or services are in some
way associated with another trader and , there is reasonable likelihood that consumers
will be confused, leading to damage the traders goodwill
...
Infringement v Passing Off
Trademark infringement:
•
registered trade mark
•
no reputation required
•
comparison of two marks only
...
Likelihood of Confusion
•
Test required for opposition, infringement and passing-off – are standard
principles:
•
Plascon Evans case
•
Phonetic, conceptual or visual similarity
•
Initial confusion only
•
All surrounding circumstances to be considered
•
The ordinary purchaser, with improper articulation, imperfect recollection and
perception
•
Compare the trade marks as wholes
•
Consider dominant components
•
Consider idea conveyed by the mark
•
Consider the degree of distinctiveness
•
Consider the nature of the product
•
Notional use
•
Evidence of actual confusion