South Africa: A Badge Of Origin

"A trade mark. A badge. Origin. Three different concepts. Used together, there is only one concept, namely, a trade mark is a badge of origin." - Judge CJ van der Westhuizen's opening statement in his recent Stable Brands (Pty) Ltd v LA Group (Pty) Ltd ("Stable Brands") judgement which was handed down on the 19th of November 2019.

The essential function of a trade mark and our trade mark law is to guarantee the identity of origin of the marked goods or service to the consumer by enabling him or her, without any likelihood of confusion to distinguish the goods or service from others which have another origin.

Two statutory requirements for the registrability of a trade mark flow from the aforementioned essential function of a trade mark, which function is also embodied in the very definition of a trade mark, namely;

• the mark must be used or proposed to be used in relation to goods or services; and;

• the mark must be capable of distinguishing the goods or services in relation to which it is used or proposed to be used from the same kind of goods or service connected in the course of trade with any other trader.

The aforementioned two requirements are not only imperative for the initial application to register a trade mark, but must also be borne in mind throughout the lifetime of the trade mark, and when deciding on the manner in which the mark is to be used in the market so as to ensure that it continues to connote the intended badge of origin.

The consequence of losing sight of these two bases requirements once the mark is registered, is evident in the Stable Brands Judgement wherein approximately 40 registered trade marks related to the South African POLO brand, the oldest mark being registered in 1976, were expunged by the court for various reasons. Some of these POLO and POLO incorporated marks were cancelled in consequence of the fact that the trade marks were no longer capable of distinguishing the goods in relation to which they were being used from the same or similar goods of another person or entity. Furthermore, the court found that some of the POLO and POLO incorporated marks were liable to be expunged for the reason that the marks were being used in a manner that was likely to cause deception or confusion amongst the relevant public.

Judge CJ van der Westhuizen explained the former by stating that ". . . the fashion industry considers the use of the word polo not to describe origin, the true purpose of a trade, and hence not exclusively of one trader's goods over that of another".

It is accordingly important to choose a mark that is compliant with the aforementioned essential function of a trade mark, and to ensure that the trade mark is used in the specific get-up that it is registered in and in relation to the specific goods and or services covered by the trade mark registration. Regular trade mark portfolio reviews and cross referencing the actual registered trade mark to the products or services bearing the mark, can be very beneficial in providing assurance that your registered trade marks are being used in a manner which enables the relevant public to distinguish your goods or services from that of another person.

To conclude, Judge CJ van der Westhuizen further writes in his Stable Brands judgement that "[d]istinguishability of the trade mark lies in the telling of a story. The story of the trade mark proprietor's goods or services, either one of good fortune, or a hapless one.".