What Is Trademark Infringement in South Africa?

Trademark infringement is when you make unauthorized use of a trademark that is identical or confusingly similar to the trade mark of another person. It is extremely important to ensure that you conduct a search of the register and the trade before finalizing any logos, slogans, names, or other forms of marks to ensure that you do not infringe on the rights of another. You should also register your trademark to protect your rights in your mark and your exclusivity in the trade.

If you infringe on a trademark of another person, in you will have to stop using the trademark and you will have to adopt a new trademark.  This will involve expending money in rebranding and marketing under a new trademark.  and This could cause unnecessary disruptions to your trade and your business.

What is Trademark Infringement?

A trademark is a symbol, phrase, word, name, or any mark that distinguishes one product, company, business, or organization from another. One must register a trademark in order to be afforded statutory protection under the Trademarks Act.  If someone makes use of a trademark that has been registered, without the consent of the owner, it is considered as trademark infringement in South Africa. Typically, these infringements may be deliberated in order to cause confusion and deceive a client base, in an attempt to increase sales and generate a profit.

How to Take Action

When you have registered your trademark, you should conduct cursory investigations to ensure that there is no infringements of your trademark. If you have identified an infringement on your trademark, you should take steps to stop the infringement.

At the outset, you can address a warning letter to the guilty party. This letter will inform the guilty party that they have infringed upon your trademark and give them the opportunity to take the necessary steps to stop the infringement to rectify the situation. If they do not comply, further legal action can be taken. It is advisable to make use of a trademark attorney during this process as they will have the necessary knowledge and expertise to handle the situation correctly.

What Is The Penalty for Trademark Infringement?

There are different types of penalties that can be imposed upon a party guilty of trademark infringement. The penalty awarded often depends on the judge presiding over the case. Some of the penalties that could be enforced include, but are not limited to:

• Termination of Use with Immediate Effect: It could be decided that the guilty party is to stop trading under the infringing trademark. This would cause them to halt all trade under the infringing trademark until they have complied with the order by changing the name or trademark.
• Royalties: They could be ordered to pay royalties to the owner of the trademark, in respect of the sales of the product bearing the infringing mark.
• Order of Cost: The judge could rule that they should pay the successful party’s costs.
• Damages: It could also be concluded that the guilty party pay for damages suffered as a result of the trademark infringement.

Example of Trademark Infringement

A good example of trademark infringement is the case that Louis Vuitton was involved in against a fried chicken outlet in South Korea.  Louis Vuitton is a well-known brand and their name, logo and slogans are registered as trademarks in a number of countries. They also monitor the trade for infringements globally against their trademarks, which is how they found out that a fried chicken restaurant in South Korea was infringing upon their trademark. They had an almost identical name, logo, and packaging. The restaurant was fined and had to bear significant legal costs, and also had to change their name and branding.

It might seem tedious at the time, but ensuring that you are complying with trademark laws is always advisable.

To find out more about trademark infringement, contact us at Adams and Adams.