M Viljoen
BLC LLB
GM du Plessis
BLC LLB
G Vivier
BEng (Electronics Eng) BCom LLB
Partners at Adams & Adams, Pretoria
Introduction | Trademarks | Domain names | Trademark and domain name disputes examined in other jurisdictions | Domain name dispute resolution procedures - international developments | Conclusion | Patent protection for Internet-related inventions | Author biographies
1. Introduction
South African trademark law recognises and protects the rights that persons acquire in trademarks, trade names or trading styles.1 These rights are protected by statute2 and also in terms of the common law.
 
Since the Internet has become such an important marketing tool, it is self-evident that the right of a proprietor to use a domain name, which is identical to or incorporates its trademark, is of the utmost importance for any business that the proprietor intends to conduct on the Internet. A domain name is a business asset. In the last few years, a vast number of disputes have arisen between parties which do not have any legal right to register or use specific domain names and the true trademark proprietors, which claim to be legally entitled to register and use the relevant domain names.
 
To understand the complexity of domain name disputes and other trademark disputes on the Internet, including the use of trademarks as metatags, it is necessary to explain briefly what a trademark is and how it can generally be protected against infringement by third parties.
2. Trademarks
Trademarks can, broadly speaking, be divided into registered trademarks and unregistered (or common law) trademarks. Registering a trademark is not mandatory, but trademark registration affords the proprietor strong statutory protection and remedies against infringement.3
 

A trademark is any mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing that person’s goods or services from those of another.4

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2.1 Registered trademarks
In South Africa a registered trademark may include a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour, container for goods or any combination of these.5
 
In terms of the Trade Marks Act 194 of 1993, infringement of a trademark will occur when:
  • an identical mark, or a mark so nearly resembling a registered trademark as to be likely to deceive or cause confusion, is used in the course of trade, without the authority of the trademark owner, in relation to the goods or services for which the trademark is registered6
  • an identical or similar mark is used in the course of trade, without the authority of the trademark owner, in relation to goods or services which are so similar to the goods or services in respect of which the trademark is registered, that in such use there exists the likelihood of deception or confusion7
  • unauthorised use is made of a mark, in relation to any goods or services, in the course of trade, which is identical or similar to a registered trademark, if such trademark is well known in South Africa and use of the mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trademark, notwithstanding the absence of deception or confusion8
The meaning of the term “well known” was examined in the McDonald’s9 case. A trademark will be considered to be well known in South Africa if the mark is known to a substantial number of persons interested in the relevant goods or services. In essence, the test is the same as the well-established common law test applied to determine whether a trader has acquired the necessary reputation to succeed in a passing-off action.
 
The Act also provides protection for unregistered well-known trademarks against the unauthorised use of a reproduction, imitation or translation of the mark, in relation to goods or services which are identical or similar to the goods or services for which the trademark is well known if the use is likely to cause deception or confusion.10
 

From the above it appears that, in principle, if a third party uses a trademark which is identical or confusingly similar to that of the trademark proprietor and such use is without the authority of the trademark proprietor, such use could amount to trademark infringement.

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The Trade Marks Act refers to fair practice and instances where bona fide use of a trademark will not amount to trademark infringement. Section 34(2) states that a registered trademark will not be infringed by any bona fide use by a person of his own name of any bona fide description or indication of the kind, quality, intended purpose or characteristics of the person’s goods or services, provided that such use is consistent with fair practice.
 
Although South African courts have not interpreted whether the use of trademarks as metatags11 would amount to trademark infringement, it would certainly depend on the circumstances of each case. When a web site offers a directory of cars for sale, it is arguable that the use of trademarks of car models may be descriptive use, which is consistent with fair practice. On the other hand, where one car manufacturer uses the trademark of another car manufacturer as a metatag to direct Internet traffic to its own web site, it is doubtful that such use would be bona fide or consistent with fair practice.
 
Furthermore, notwithstanding the possibility that use of a trademark as a metatag by a third party of a registered trademark could fall within one of the exceptions set out in section 34(2), such use could still amount to passing-off or unlawful competition, depending on the circumstances.
 
It is important to note that the use of a mark in the course of trade is a requirement for any type of infringement in terms of the Trade Marks Act. Whether a mark is being used in the course of trade is a question of fact and depends on the circumstances of each particular case. It should be noted, however, that it is questionable whether the mere registration of a domain name, without any use of such domain name, constitutes infringement. This aspect has been examined in a number of domain name disputes and is discussed in more detail below.12
2.2 Unregistered trademarks
Our common law recognises the rights that a person acquires as goodwill (which includes, as a component, a reputation)13 or the ability to attract custom, which attaches to a trademark. The principles of unlawful competition and passing-off are of particular relevance. Passing-off has been defined in the case of Capital Estate & General Agencies (Pty) Limited v Holiday Inn, Inc.14 as follows:
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“The wrong known as passing-off consists in a representation by one person that his business (or merchandise, as the case may be) is that of another, or that it is associated with that of another, and, in order to determine whether a representation amounts to passing-off, one inquires whether there is a reasonable likelihood that members of the public may be confused into believing that the business of the one is, or is connected with, that of another”.

The protection afforded to a trademark owner in terms of the common law is in addition to any statutory protection the owner may have in terms of the Trade Marks Act and is not affected in any way by legislation on the subject of trademarks.15

The proprietor of a common law trademark is entitled to prevent another person from passing-off goods as being associated or connected, in the course of trade, with the proprietor or the proprietor’s goods. In this regard, the proprietor has to prove two things:
  • that he has used his mark to such an extent that he has acquired a reputation and goodwill in the mark
  • that the other person’s conduct is likely to cause deception or
    confusion among customers16
Against the background of the above, the difficulties arising from the registration of domain names that conflict with prior trademark rights are now examined.
3. Domain names
3.1 Differences between trademark registrations and domain name registrations
To understand the peculiar difficulties underlying domain name disputes, it is necessary to have some background regarding the resolution of domain name disputes internationally, and the difference between the domain name registration system and the general system of registration of trademarks throughout the world.
 

First, each domain name must be unique, whereas under the trademarks
registration system in general, there can be a multitude of identical trademarks coexisting on the register; for example, if they are used and registered for different goods or services, or used and registered in different territories. However, of all the proprietors that own the identical trademark, only one can register and use the corresponding domain name. By way of example, there are a number of proprietors that use the same trademark STERLING, but for different goods and services. Only one of them would be allowed to register the domain name sterling.co.za in South Africa.

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Second, registration is allowed of any domain name that is not exactly identical to a domain name registered earlier. It therefore does not prohibit the allocation of similar (even confusingly similar) domain names to different proprietors in the same business. For example, sterling.co.za could be registered by the proprietor of the trademark STERLING and stirling.co.za by a competitor, although the principles of trademark law prohibit the use of confusingly similar trademarks, as mentioned earlier...
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Author biographies  

Mariëtte Viljoen
is a partner in the trademark litigation department of the firm Adams & Adams. She obtained BLC and LLB degrees at the University of Pretoria and was admitted as an attorney in 1988. She qualified as a trademark practitioner in 1991, at which time she became a partner at her previous firm, specialising in trademark and copyright litigation.
 
Mariëtte is a Fellow of the South African Institute of Intellectual Property Law. She is also a member of various local and international professional bodies and committees in the trademark field. She has spoken on trademark issues at seminars and conferences organised by the World Intellectual Property Organization in Tanzania and Malawi and at seminars and conferences in South Africa.
 
Gérard du Plessis is an attorney and partner of Adams & Adams. He obtaineg the University of Pretoria and practised in the commercial law section of the firm before joining the trademark department. Gérard is the co-author of the South African chapter of International Trade Secrets Law and has spoken at seminars and conferences on issues relating to trademarks, including disputes concerning domain names.
 
Garth Vivier is a partner in the patents department of Adams & Adams. He attended the University of Pretoria and in 1983 he obtained BEng (Electronics). In 1991 he completed his LLB at the University of Cape Town. He obtained BComm at the University of South Africa in 1996. Garth was admitted as an attorney in 1994 and as a patent attorney in 1995. Prior to joining Adams & Adams, Garth practised as an electronic engineer designing and testing missile control systems.

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  1. In this chapter, these terms will be collectively referred to as “trademarks”. (Back)
  2. The Trade Marks Act 194 of 1993 (hereafter referred to as the Act). The repealed Trade Marks Act 62 of 1963 is still relevant under
    certain circumstances.
  3. Section 34(3) of the Act. The remedies available to a trademark proprietor in terms of this
    section include an interdict, delivery-up order, damages or, in lieu of damages, a reasonable royalty.
  4. Section 2(1)(xxiii) of the Act
  5. Section 2(1)(x) of the Act (Back)
  6. Section 34(1)(a) of the Act
  7. Section 34(1)(b) of the Act
  8. Section 34(1)(c) of the Act
  9. McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Limited; McDonald’s Corporation v Dax Prop CC; McDonald’s Corporation v Joburgers Drive-Inn Restaurant 1997 1 SA 1(A).
  10. Section 35 of the Act (Back)
  11. Metatags are key words that are embedded in the web site’s code and which can be read by Internet search engines and web browsers to index and identify relevant web sites. Metatags are not visible on the web site.
  12. See par. 4.1.2 below.
  13. Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd 1998 3 SA 175 A.
  14. 1977 (2) SA 916 (A) 929C. For a detailed discussion of the elements of passing-off see Webster and Page South African Law of Trade Marks, 4th Ed par 15-5 and further.
  15. Section 33 of the Act (Back)
  16. Adcock-Ingram Products v Beecham SA (Pty) Ltd 1997 SA 434 (W)
  17. Webster and Page supra par 15.6