Why trade mark infringement is a serious risk in SA

For all branded businesses, brand identity is a critical asset – and failing to protect it or inadvertently infringing on another business’s trade marks can have serious consequences. Trade mark infringement claims can result in costly court battles, forced rebranding, PR crises, reputational damage, and even the destruction of infringing goods. 

Understanding the basics of trade marks, and learning from real-world examples of trade mark infringement cases in South Africa can help you safeguard your brand and avoid costly missteps.

What qualifies as infringement?

Under the Trade Marks Act South Africa, infringement occurs when a person uses a mark that is identical or confusingly similar to a registered trade mark in relation to the same or similar goods or services in respect of which the mark is registered, in a way that is likely to deceive or cause confusion in the minds of customers. This is not only limited to word marks (names) and devices (images or logos), but can also include slogans and sounds. Courts assess trade marks for similarity on three levels: visually, aurally and conceptually. Similarity on just one of these three levels is sufficient for trade marks to be confusingly similar. Even disclaimers (an endorsement that the trade mark owner does not claim exclusive rights in a particular word or element, usually because that element on its own is non-distinctive) won’t get you off the hook, if the trade mark as a whole is confusingly similar to the registered mark. Infringement can also entail licensing out a trade mark without the original owner’s approval – an issue that often creeps in with the local use of international brands.

Examples of real South African cases

iCollege v Xpertease (2023)

This case involved the trade marks used by iCollege (Pty) Ltd and Xpertease Skills Development and Mentoring CC. iCollege is the owner of various registered trade marks for its iCOLLEGE Logo, which is registered in respect of education services. This logo incorporates a device (picture element) which features a graduation cape. Notably, these marks were registered subject to a disclaimer of the word “College” – meaning that iCollege could not claim exclusive rights in the word “College” separately and apart from its iCOLLEGE Logo trade mark. iCollege alleged that Xpertease was infringing its iCOLLEGE Logo trade marks through the use of a similar logo mark for iCOLLEGE ONLINE LEARNING – also featuring a graduation cape device (albeit different looking to the one in the iCOLLEGE Logo). The High Court initially ruled in favour of Xpertease, however, on appeal the Supreme Court of Appeal (SCA) overturned the High Court’s decision and ruled in favour of iCollege. The High Court had focused too much on the pictorial differences in the devices, ignoring the phonetic identity and overall impression of the marks. The Supreme Court of Appeal held that the marks as wholes (including the disclaimed element “College”, which must still be taken into account when comparing the marks) were confusingly similar and likely to mislead consumers. The ruling confirms that a holistic test of visual, phonetic and conceptual brand identifiers should be done in infringement assessments. It is important to remember, however, that it is sufficient to show similarity on any of these three grounds.

 

Adcock Ingram v Cipla-Medpro (2025)

Adcock Ingram challenged Cipla-Medpro’s use of the trade mark FURIZOME, which it alleged infringed its well-known URIZONE mark. Both trade marks are used for medicines which are only available through a doctor’s prescription and are dispensed by pharmacists. The court found the names were “strikingly similar” and likely to confuse patients, despite the medicines being prescription-only. This is because patients are increasingly engaged in their own healthcare choices and may request a particular medicine by brand name. The court ruled in Adcock’s favour. The protection of trade mark rights extends to patient safety and public perception, highlighting how infringement can have real-world consequences beyond business competition.

Lebohang Likotsi Hlathuka v Tammy Taylor Global Franchising & Others (2025)

In a landmark Pretoria High Court ruling, Lebohang Hlathuka successfully challenged the unauthorised use of the TAMMY TAYLOR trade mark in South Africa. After paying R600,000 for what she believed was a legitimate franchise, Hlathuka discovered that Melany and Peet Viljoen, who purportedly owned the TAMMY TAYLOR trade mark in South Africa and franchised the brand, lacked any legal rights to use or license it locally. A register search confirmed that Tammy Taylor, Inc., based in the United States, was the lawful owner of the trade marks in South Africa. The court ordered the Viljoens to repay Hlathuka’s investment with interest, cease selling Tammy Taylor franchises in South Africa, and remove all references to TAMMY TAYLOR from all marketing, online and social channels within 30 days The couple has filed an appeal, temporarily delaying enforcement, but the ruling underscores a critical legal precept: use of a trade mark must be authorised and properly registered. Unauthorised brand use can result in trade mark infringement, financial restitution, and reputational damage.

What the law says: remedies available under the Trade Marks Act

There are a few ways that brand owners can seek relief against infringing marks. Under the Trade Marks Act, infringement remedies include:

● Interdicts (injunctions) to stop infringing use

● Damages (or a reasonably royalty in lieu thereof)

● Delivery-up of infringing goods

Proceedings must be instituted in the High Court or via arbitration (if the parties agree to arbitration). The burden of proof lies with the trade mark owner to show infringement on a civil standard – on a balance of probabilities. It is possible, however, to explore other avenues to prevent infringing use pre-emptively.

One example is a customs recordal, which allows a trade mark owner to register their trade mark with the customs authorities, so that the customs authorities can seize infringing goods at the border if they are of the view that those goods constitute trade mark infringement. The trade mark owner must, however, provide certain indemnities to the customs authorities as part of the recordal, to prevent abuse of the system.

 

What to do if you’re infringed upon

If you believe someone is infringing your registered trade mark, you can:

● Issue a cease-and-desist letter outlining your rights and demanding that they cease the infringing conduct

● Proceed with litigation or arbitration, supported by evidence such as proof of actual confusion, or evidence of reputation

● Enlist the help of Customs to seize infringing goods as they enter the country.

Whether you’re enforcing your rights or defending against a claim, having the right legal guidance can make all the difference in how your trade mark issue is resolved. It is also important to enlist the help of legal professionals who truly understand trade mark law. Choosing the right trade mark attorney in South Africa can make all the difference.

 

How to avoid infringing others

● Conduct a comprehensive Trade Mark search before adopting a mark or launching a new brand, preferably with the help of a legal professional.

● Use professional providers or Spoor & Fisher to interpret CIPC results and identify similar marks across classes.

● Consider phonetic, visual, and conceptual similarity, not just identical spelling.

● Work with a specialised attorney to help you with classification, clearance, and avoiding costly rebranding or litigation.

 

Why you can trust Spoor & Fisher

At Spoor & Fisher, we frequently assist clients in managing infringement risk – and we’ve done so successfully for over 100 years. In one recent case, a startup had planned to launch under a name that, after our clearance search, was found to be deceptively similar to a registered mark in a related service class. We advised them to rebrand before launch – saving them significant rebranding costs and avoiding potential litigation.

“Infringement is not just about directly copying something – it’s about confusion. We help clients identify potential similarities, assess risk, and build defensible trade mark strategies.” ~ Spoor & Fisher Attorney

Frequently Asked Questions

在南非注册商标的时间表是什么？

The timelines differ from country to country. In South Africa, the trade mark registration process typically takes two to three years. However, on registration, rights in the trade mark date from when the application was filed. If a search was conducted before the filing of that application, a reasonable indication should be obtained as to whether or not objections can be expected.

除了在每个感兴趣的国家/地区注册商标之外，还有其他选择吗？

有些系统可以在多个国家提交单一的商标注册申请。

这些体系是国际马德里体系、欧洲的 CTM 体系以及非洲的 ARIPO 和 OAPI 体系。

通过马德里体系进行商标国际注册是商标所有人通过向伯尔尼的一个集中局提交单一国际注册申请来确保其商标在许多国家得到保护的一种有效且相对便宜的方式。南非.例如，已批准批准马德里议定书，但尚未加入。因此，南非实体尚不能使用该系统，除非它们在该系统的成员国拥有真实有效的工业或商业机构或住所。

CTM 系统与单个欧洲共同体商标申请相关，扩展到欧盟的所有 28 个成员国。

OAPI 和 ARIPO 体系是非洲的区域体系，可以通过提交一个商标申请在许多非洲国家获得商标保护。南非不是这些系统的成员，但南非实体可以使用它们。

注册后，我的商标在南非注册国以外的国家是否受到保护？

商标的权利具有严格的地域性，仅限于获得注册的地域，或者在某些情况下，通过使用或声誉可以证明存在权利的地域。

例如，在南非注册并不授予在出口市场上的商标的任何权利，并且南非出口商无法避免在出口国可能发生的侵权诉讼。

商标权利必须在每个感兴趣或潜在利益的国家以尽可能最好的方式得到保护；也就是说，通过注册。

如何表明我的商标已在南非注册？

使用“注册商标”或其符号®不是强制性的，但这是可取的。在南非，如果您的商标尚未注册，您可以使用“商标”或缩写 ™ 的表述，以明确在相关特征中要求商标权。

Conclusion: prevention is better than legal battles

Trade mark infringement is not a hypothetical risk. It incurs serious financial, reputational, and business costs for well known brands. By understanding South African case law and taking proactive steps such as searching properly, registering early, and monitoring use – you can protect your brand and avoid disputes. As in the Tammy Taylor case, you can also avoid getting duped. 

Spoor & Fisher offers deep expertise on trade mark infringement and enforcement – so that you can protect your brand and business proactively, not reactively. We are trusted by South African startups, small and medium-sized businesses, and global corporations alike to safeguard their intellectual property rights.