n SA Mercantile Law Journal = SA Tydskrif vir Handelsreg - Is the true north? Recent South African interpretations of 'similar goods' in the Trade Marks Act : analyses

Volume 25, Issue 1
  • ISSN : 1015-0099
  • E-ISSN: 1996-2185



Our Trade Marks Act 194 of 1993, in line with developments elsewhere, widened the scope of protection granted to trade marks, by creating three forms of trade-mark infringement. The first, most traditional form of infringement is where a registered mark is infringed by use of the identical or confusingly similar mark on the goods for which it is registered (s 34(1)()). The second type of infringement was introduced by the Act: this covers use of the identical or similar mark on similar goods, if 'in such use there exists the likelihood of deception or confusion' (s 34(1)()). This resulted in the introduction of the concept of 'similar goods or services' to South African trade-mark jurisprudence. The third, also novel, type of infringement covers use of the same or similar mark on any (usually dissimilar) marks, if the mark is well-known and use of the mark by another takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark (s 34(1)()) (infringement by dilution). Section 10 of the Act, on bars to the registration of trade marks, contains corresponding provisions. As a result, the Act contains two instances in which similarity must be determined. First, in respect of all three forms of infringement, if the marks are not identical, are they similar? And secondly, only relevant for section 34(1)() infringement purposes, are the goods or services similar? (For the sake of brevity, I shall refer only to 'similar goods' unless a service mark is in issue.)

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