1.

Nature of a Trade Mark

Definition of a Trade Mark:
o A trade mark is a mark that distinguishes one trader’s goods or services from
those of another.
Legal Definition:
o A trade mark (excluding certification or collective marks) is a mark used or
intended to be used, by a person, to differentiate goods or services from similar
goods or services linked to another trader in the course of trade.
Criteria for Distinctiveness:
o A mark must be capable of distinguishing the goods or services either:

 Inherently: It is naturally unique and distinguishable at the date of

application.
 Through Prior Use: It has acquired distinctiveness due to prior use.
Qualification for Registration:
o The Act outlines the criteria a sign must meet to be considered a "mark" and the
additional requirements for a "mark" to qualify for registration as a "trade mark."
1.1. What is a mark?

Definition Under Trade Marks Act:

o A 'mark' is defined in Section 2(1) of the Trade Marks Act as:
 "Any sign capable of being represented graphically."
Examples of a Mark:

o Includes but is not limited to:

 Device
 Name
 Signature
 Word
 Letter
 Numeral
 Shape
 Configuration
 Pattern
 Ornamentation
 Colour
 Container for goods
  Combinations of the above.
2. Legal Basis:
o Trade mark law is statutory, and the definition of a 'mark' forms the foundation for
understanding what can qualify as a trade mark.

1.2 Essential Elements of a ‘Mark’ in terms of the definition

Key Requirements:
o Any Sign: A ‘mark’ can take various forms due to its broad and non-exhaustive
definition.
o Capable of Graphic Representation: Must be representable via writing, diagram,
photograph, or other visual means.
Flexibility of Trade Mark Formation:
o The non-exhaustive nature allows for trade marks to be formed in diverse ways,
including unconventional marks.
Graphical Representation:
o Purpose: The representation must clearly describe the trade mark to enable an
individual inspecting the Trade Mark Register to identify the mark and its scope
of protection.
o Form: Varies based on the type of mark but must be precise and sufficiently
clear.
o Written Description: An essential component of the graphic representation; its
wording must be crafted carefully as it defines the trade mark’s identity.
Case Study – Three-Dimensional Marks:
o In Cointreau et Cie SA v Pagan International 1991 (4) SA 706 (A), a two-
dimensional graphical representation of a three-dimensional mark was deemed
insufficient, highlighting the importance of accurately representing the mark’s
physical nature to avoid nullifying registration.

1.3 Non-traditional marks

Non-Traditional Marks

 Types of Non-Traditional Marks:

o Three-dimensional marks
o Colour marks
o Holograms
o Motion/multimedia marks
o Position marks
o Gesture marks
o Olfactory (scent) marks
o Taste marks
o Texture marks
o Registrar Guidelines (2009):
 o Published to clarify requirements for registration of non-traditional marks.
o Emphasizes the need for clear, precise descriptions and representations.

Scent Marks:

 Challenges:
o Difficulty in achieving clear, precise, durable, and objective graphical
representation.
o Example: Sieckmann v Deutsches Patent-und Markenamt (2003):
 CJEU established the Sieckmann criteria (7 requirements: clear, precise,
self-contained, accessible, intelligible, durable, objective).
 Attempts to register “methyl cinnamate” (balsamically fruity scent with
cinnamon) failed due to lack of precision and durability.

 Outcome:
o Registration of scent marks remains theoretically possible but practically
impossible.

Sound Marks:

 Requirements:
o Represented graphically via musical notation on a stave.
o Accompanied by clear, concise descriptions and recordings in formats such as
CDs, DVDs, or MP3s.
 Examples:
o Nokia ringtone (TM No. 2004/15073).
o Jingle: "You got an uncle in the furniture business" (TM No. 2005/19695).
 Practical Issues:
o Only those with musical expertise can interpret notations for similarity.

Colour Marks:

 Definition:
o A single colour or combination of colours may qualify if sufficiently distinctive.
o Requires pictorial representation and a detailed written description.
 Examples of Descriptions:
o “The trade mark consists of the colour GREEN applied to the cap of a bottle.”
 Functional Limitations:
 o Natural colours, safety-related colours (e.g., orange for safety, red for hazards),
or colours serving technical purposes (e.g., silver for insulation) are not
registrable.
 Colour Depletion Doctrine:
o Restricting monopolization of colours to ensure fairness and availability of the
colour palette to other traders.

2. What is a Trade Mark?

To determine whether a mark qualifies as a "trade mark," it must first be established that the
mark is a “sign capable of being represented graphically.” Once this criterion is satisfied, the
mark must meet the definition of a "trade mark" as set out in Section 2 of the Trade Marks Act,
which states:

A trade mark is a mark used or proposed to be used by a person in relation to goods or

services for the purpose of distinguishing those goods or services from the same kind of
goods or services connected in the course of trade with any other person.

This excludes certification and collective trade marks, which serve different purposes.

2.1. Essential Elements of a Trade Mark

For a mark to qualify as a trade mark, it must satisfy the following conditions:

 Mark used or proposed to be used.

 In relation to goods or services.
 For the purpose of distinguishing them from the same kind of goods or services
connected with another party in the course of trade.

2.2. Mark Used or Proposed to Be Used

The phrase "used or proposed to be used" indicates that prior use is not a prerequisite for
registration in South Africa, unlike jurisdictions such as the United States or Canada. As long as
the applicant intends to use the mark, it can qualify for registration. However, a lack of bona
fide intent to use the mark at the time of application may render it invalid.

Definition of "Use"

The Act defines "use" in Section 2 as:

 Visual representation of the mark.

 Use on containers related to goods.
 Audible reproduction of the mark, where applicable.
Under prior legislation (pre-May 1995), defensive trade marks could be registered and retained
without actual use. However, the current Act disallows defensive trade marks. Marks registered
under the old regime transitioned to ordinary trade marks, provided they satisfied the use
requirements within ten years (i.e., by May 2005).

2.3. Use in Relation to Goods and Services

The Act interprets "use in relation to goods or services" as follows:

1. Goods:
o Use upon goods: Direct marking on the goods themselves.
o Physical relation to goods: Use on containers, wrappers, tickets, or tags.
o Other relation to goods: Indirect associations, such as use on invoices or
documentation.

Relevant Case Law:

o Berman Bros (Pty) Ltd v Sodastream Ltd (1986).

o Abbott Laboratories v UAP Crop Care (Pty) Ltd (1999).
2. Services:
o Use refers to the mark's application in relation to the performance of services.

2.4. Purpose of Distinguishing Goods and Services

The defining function of a trade mark is its distinguishing capability—the ability to set apart
one trader’s goods or services from those of another. This "distinguishing function" emphasizes
the mark's role as a badge of origin.

Case Law on the Functions of a Trade Mark

1. Distinguishing Function:
o In Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (1999), the European
Court of Justice noted that a trade mark must guarantee the origin of goods or
services, enabling consumers to differentiate between products without
confusion.
2. Origin Function:
o In Glaxo Group v Dowelhurst Ltd (2000), Laddie J highlighted that a trade mark
acts as a guarantee of the goods' origin and quality. A trade mark is a
representation that "these goods are from me and are of a quality I am prepared
to stand by."
3. South African Context:
o The South African Supreme Court of Appeal in AM Moolla Group Ltd and Others
v The Gap Inc. and Others (2005) reiterated the dual function of a trade mark:
distinguishing goods/services and indicating their business source.