Ever wondered why certain products are known by a different name in South Africa than in the rest of the world? This is due to our unique pre-1995 trademark legislation that allowed companies to register a trademark locally that had been in use internationally. Trademark rights in South Africa subsequently became a fascinating topic that can be about as precarious to navigate as running full steam through a minefield.

This led to the interesting situation that some well-known international brands could not be marketed locally under the name they are known internationally, because they would infringe the trademarks of a local company (e.g. Polo International clothing). Or a product name has to be changed for the South African market.

The most famous trademark case, which became a Harvard Law case study, involves the registration of the “McDONALD’s”, “Big Mac”, and large yellow “M” trademarks by the local owners of the Chicken Licken franchise in the early 1990’s. What’s more, they applied for the expungement of the US McDonald’s right to these trademarks in South Africa – and succeeded, despite vigorous opposition from the US trademark owners. In May 1995, however, the Trade Marks Act, No. 194 of 1993 come into force, with Section 35 protecting “well-known” trademarks emanating from certain foreign countries. McDonald’s appealed, and won the trademark fight with costs.

The crux of this judgement was arguments around what constitutes “well-known” in South Africa – which McDonald’s could prove with market research.

In cases where a specific international product or brand name is not so well-known in South Africa, the local registration takes precedence.

A recent example is the name of the tool wristband with watch from Leatherman, which is called Tread Plus Watch in South Africa – not Tread Tempo as it is known in the rest of the world, on the Leatherman website, or described in the Q1 2018 issue of Sports Trader. That is because the Foschini Retail Group pointed out (after publication) that they had registered the name Tempo in July 1986 for goods in Class 14, which includes watches and goods of other precious metal and alloy materials. That prohibits any other company from using the name Tempo for a watch in South Africa.

We’ll be doing a full-length article on interesting cases of conflicting trademark registrations in South Africa in the Q2 issue of Sports Trader. If you have examples that you would like us to add, please let Trudi du Toit know at 021 461 2544 or via email

 

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