The relevance of prior trade mark use in South African common law

Abstract

The nature of the right protected by the law relating to unlawful competition is the right to goodwill, although the right to a distinctive mark, and the right to a trade secret can also feature. The existence of a general form of liability has been recognized by the courts. The interaction of reputation and goodwill was also considered. The current position is that it is only a reputation, and not also goodwill, that is required. Protection was granted in cases where a particular product was not yet on the market. The existence of an express intention to interfere with a rival’s marketing campaign has been held to amount to unlawful competition. If a descriptive mark is used, the risk that it may be used by a rival must be accepted. With regard to geographical disputes, the courts consider the particular area, and third parties that have used their marks elsewhere, cannot enter the area without further ado. In the situation where there is concurrent use by two parties, it was noted that both parties could be exercising their subjective rights to use their marks. With regard to the honesty of adoption, it was submitted that the doctrine of unclean hands should not apply. It was noted that the existence of a trade mark registration is not a defence to a passing off action. Lastly, as far as the right to use a mark is concerned, the position is that against other statutory proprietors, there is a limited right to use a mark, but not against a common law user.