Registered trade marks and their use
Unlike any other facet of intellectual property, registered trade marks afford protection against infringing third parties in perpetuity (provided that the registered mark is renewed every 10 years). This is one of several reasons why the registration of a trade mark is invaluable to brand owners. However, with registration comes responsibility.
One of the numerous responsibilities brand owners are faced with is to ensure that their registered trade marks are being used. Fortunately, in South Africa, proof of ‘a use of a trade mark’ is not a prerequisite to apply to register or renew the mark. However, once registered, a trade mark is vulnerable to cancellation on the basis of non-use where no bona fide commercial use of that mark, in relation to the claimed goods / services, by the owner (or any person permitted to use that mark), has taken place for a continuous period of 5 (five) years from the date the mark was registered.
What is bona fide commercial use of a trade mark? The basic principle attributed to the genuine use of a trade mark is that a brand owner should not use a registered trade mark for some ulterior purpose such as, for example, simply to prevent the mark from being cancelled. Instead, it speaks to use that furthers the trade in such goods/services of that mark, for the commercial benefit of the brand owner.
The aforesaid bona fide commercial use needs to be use of the trade mark substantially in the form that it was registered. Use of a trade mark incorporating slight additions or alternations to the registered trade mark will be accepted as proof of use (provided that the alterations or additions do not substantially alter the trade mark).
The easiest way to test this principle is to ask yourself: If you compare the mark you use with the registered mark, does the mark used retain the memorable features of the mark registered? Asked differently, if the mark used and the registered mark are placed on different items of clothing in a store, would a customer identify those articles of clothing with the same brand owner? If not, your registered trade mark is at risk of being vulnerable to cancellation on the basis of non-use.
There are several additional nuances that need to be taken into consideration when instituting or defending trade mark cancellation proceedings. Brand owners would be best placed to approach trade mark attorneys for strategic legal advice relating to the cancellation of registered trade marks on the basis of non-use.
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