n Stellenbosch Law Review = Stellenbosch Regstydskrif - Prior use as a ground of opposition in South African Trade Mark law
|Article Title||Prior use as a ground of opposition in South African Trade Mark law|
|© Publisher:||Juta Law Publishing|
|Journal||Stellenbosch Law Review = Stellenbosch Regstydskrif|
|Publication Date||Jan 2008|
|Pages||51 - 70|
In terms of the previous Trade Marks Act 62 of 1963, provision was made for the determination of rights of competing applicants. The current Trade Marks Act 194 of 1993 allows an opposition of a later application by an earlier applicant; and conversely, the opposition of an earlier application by a later applicant, if the latter enjoys existing rights at the relevant time.
Although neither of the provisions concerned makes mention of prior use, it is submitted that such use would constitute an important factor. Insofar as an opposition on the basis of prior use is concerned, it is noted that section 16(1) of the current Act's predecessor was interpreted in WM Penn Oils Ltd v Oils International (Pty) Ltd1966 1 SA 311 (A) as excluding protection where there was no use creating a reputation or goodwill. In the case of an opposition in terms of section 10(15), use by the applicant prior to the filing date of the opponent should enable the applicant to prevail in the opposition. With regard to section 10(16), it is submitted that the legislature intended to give an applicant that opposes another application the benefit of a lesser burden of proof on account of the fact of filing.
Section 10(12) of the current Act resembles section 16(1) of the previous Act, in once again requiring the existence of a reputation. One issue that requires particular consideration is the possible difference in nature between an opposition in terms of section 10(12), and the remedy available in cases of passing off. The issue of what was referred to in Celine SA Trade Mark [ 1985] RPC 381 as"the degree of confusability" is discussed. Whereas the requirement for passing off in English law is deception, the position in South African law differs in that it is accepted that the likelihood of confusion is sufficient to found an action for passing off. Thus, scope for a distinction between that area oflaw and section 10(12 ) of the South African Act seems doubtful.
Finally, as regards the scope of comparison in opposition proceedings in terms of section 10(12), the existence of various and often contradictory opinions is noted. In the British Open Country Trade Mark case  RPC 477 it was held that regard could be had to the actual use of a mark by theapplicant. It is nevertheless submitted that it is the mark of the applicant as filed, and that of the objector, as used, that must be compared.
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