Everything in business is susceptible to change. Business strategies, company missions and visions may change. Trade marks and slogans also change. What are the repercussions for trade mark owners who do not change their trade marks completely, but merely change the font or delete matter from the trade mark?
In terms of the Trade Marks Act 194 of 1993 (the “Act”), where use of a mark is required to be proven, the Registrar or the court may accept use of the trade mark with additions or alterations not substantially affecting the identity of the mark (s 31(1)). The test is two-fold:
- Whether there have been any changes to a particular mark?
- If so, whether those changes substantially affect the identity of the trade mark?
The application of this principle was illustrated in a number of cases in South Africa. In Bernstein Manufacturing Co (1961) (Pvt) Limited v Sherpherdson (1) 1968 (4) SA 386 (T), the mark was registered as depicted in figure A.
However, the respondent used the mark in figure B.
In deciding whether the actual use amounted to use of the registered trade mark, the court accepted that the change did not substantially affect the identity of the registered mark. In its judgment the court enquired whether the arresting features of the mark, after the amendment, had been retained. The court found that the arresting features of the mark were indeed retained and, therefore, use of the trade mark in Figure B constituted use of the trade mark in Figure A.
Furthermore, in Adcock Ingram Consumer Products Limited v Dhansooklal Jeenabhai Mody t/a Black Magic (1997) 3 All SA 125 (T), the appellant applied in terms of s 34(5) of the Trade Marks Act to introduce amendments to its trade mark so that the trade marks could be depicted with more clarity. The version of the appellant’s mark as filed appears in Figure C, whilst the proposed amendment appears in Figure D.
Here again, the court held that the amendment did not substantially affect the identity of the mark.
In addition, in United Bank Ltd v Standard Bank of SA Ltd 1991 4 SA 810 (T), the court concluded that the use of ACCESSBOND did not substantially affect the identity of the mark ACCESS, bearing in mind that the word BOND is descriptive of mortgage bond services.
The three judgments discussed above were decided under the previous Trade Marks Act 62 of 1963. However, it would appear the provisions as contained in both acts are interpreted in the same manner.
Generally, amendment to a trade mark may be effected in two ways:
- Making a formal application to the Registrar of Trade Marks (Registrar) for the amendment of the trade mark
- Merely changing the trade mark in advertising material and invoices and brochures of the company.
With regard to the formal amendment of the trade mark, the Registrar has discretion to allow the amendment or not. If the applicant is not satisfied with the Registrar’s decision, he may lodge an appeal with the High Court. If the High Court is also of the view that the amendment affects the identity of the trade mark, the trade mark proprietor may have to file a new application.
In instances in which the trade mark proprietor merely changes his trade mark without making an application to the Registrar, he runs the risk of his trade mark being expunged on the basis of non-use. If the use of the trade mark is questioned and the trade mark proprietor relies on s 31(1), he does not have a guarantee that the court will rule in his favour. If the court decides that the arresting features of the trade mark had not been retained, the trade mark registration may be expunged.
Trade mark owners must also take control of and be very vigilant with regard to the manner in which the trade mark is used. The use of the combined trade mark (trade name and the device) does not necessarily equal the use of the trade name.
In the recent judgment of Century City Apartments v Century City Property Owners (2009) ZASCA 157, the court considered whether use of the word mark CENTURY CITY infringed the device mark, illustrated below.
The court held that the value of a device mark depends on its visual impact and depending on how the marks are used there may not be oral use of the device mark. For example, the abovementioned device mark was used on advertisements and internet sites. The court came to the conclusion that use of CENTURY CITY was not an infringement of the device mark, based on the fact that there was no evidence that the mark was used aurally. It follows that if the trade mark was used on television or radio adverts, the judgment may have been different. Furthermore, if the trade mark proprietor has a registration for the device mark and is using it on the internet only, the use of this mark may not be regarded as use of the word mark CENTURY CITY.
Therefore, it is suggested that legal advice be obtained from a trade mark attorney prior to changing a trade mark. Some proprietors may believe that they are saving costs or may not be aware of the repercussions, but the attorney’s opinion may go a long way in saving the trade mark. As they say, change is great, but it will not be great if the trade mark owner has to pay the price of losing a trade mark which may be worth millions!
Spoor & Fisher.