The use of the first applicant's trade marks by the second respondent constitutes what has come to be known as
comparative advertising or comparative brand advertising in the industry. It is described thus in Webster and Page
South African Trade Marks 4 ed at 1235:
"Comparative advertising, as the name suggests, is advertising where a party (the advertiser) advertises his goods or
services by comparing them with the goods or services of another party. Such other party is usually his competitor and is
often the market leader in the particular trade. The comparison is made with a view to increasing the sales of the advertiser.
This is typically done by either suggesting that the advertiser's product is of the same or a superior quality to that of the
compared product or by denigrating the quality of the compared product."
In an article published in a South African Mercantile Law Journal 1990 (2) under the heading "Misappropriation of the
Advertising Value of Trade Marks, Trade
View Parallel Citation
Names and Service Marks" by BR Rutherford, the author explained the need for protection against comparative
advertising in the following terms:
"The preservation of the reputation and unique identity of the trade mark and the selling power which it evokes is of vital
importance to the trade mark proprietor to protect and retain his goodwill. Other traders will frequently wish to exploit the
selling power of an established trade mark for the purpose of promoting their own products. The greater the advertising
value of the trade mark, the greater the risk of misappropriation. Any unauthorised use of the trade mark by other traders
will lead to the gradual consumer disassociation of the trade mark from the proprietor's product. The more the trade mark is
used in relation to the products of others the less likely it is to focus attention on the proprietor's product. The reputation and
unique identity of the trade mark will become blurred. The selling power becomes eroded and the trade mark becomes
diluted."
This article was written when the previous Trade Marks Act ("the 1963 Act") was in force and at a time that the
traditional view was that the true function of a trade mark was to indicate its source of origin. Consequently,
Rutherford concluded:
"A claim for misappropriation of the advertising value of a trade mark represents a significant departure from the traditional
view that the true legal function of a trade mark is to indicate source or origin. Like the American courts, our
Page 509 of [1999] 1 All SA 502 (C)
courts are conservative in their approach and are reluctant to accord judicial recognition to the advertising function of a
trade mark. A claim for misappropriation of the advertising value will succeed only if the defendant's conduct also involves
an impairment of the origin function of the trade mark, that is where such conduct is likely to cause confusion as to the
origin or sponsorship of the products concerned. Legislative reform therefore appears to be the only viable alternative for
the speedy introduction of such a claim."
I mention this quotation for, as will be seen, we have moved away from the "badge of origin approach" to a trade
mark for the purpose of a trade mark is now defined as being that of distinguishing the goods or services from the
same kind of goods or services connected in the course of trade with any other person. The 1963 Act provided a
mechanism for recourse against a comparative advertiser where such conduct amounted to an infringement of the
rights of the trade mark proprietor. The remedy in such circumstances was to be found in section 44 of the 1963 Act
which provided that:
"44.
Infringement
(1)
... the rights acquired by registration of a trade mark shall be infringed by
(a)
unauthorised use as a trade mark in relation to goods or services in respect of which the trade mark is
registered, of a mark so nearly resembling it as to be likely to deceive or cause confusion; or
(b)
unauthorised use in the course of trade, otherwise than as a trade mark, of a mark so nearly resembling
it as to be likely to deceive or cause confusion, if such use is in relation to or in connection with goods or
services for which the trade mark is registered and is likely to cause injury or prejudice to the proprietor
of the trade mark:"
It will be seen that section 44(1)(b) referred to use of a mark "otherwise than as a trade mark" and also that
infringement occurred only if the use of the
View Parallel Citation
mark was likely to cause injury or prejudice. Furthermore, infringement would only occur if the good (or services) to
which the advertisement related fell within the scope of the specification of goods (or services) of the registered
mark.
Section 34(1)(a) of the 1993 Act effectively incorporates all the provisions of section 44(1)(a) and (b) of the 1963
Act, but it should be noted that there is no longer a reference to the use of a mark "as a trade mark" or "otherwise
than a trade mark" and most importantly, the 1993 Act contains no provision in section 34(1)(a) that the use of the
offending mark must "be likely to cause injury or prejudice". It seems clear from the aforegoing that section 34(1)(a)
of the 1993 Act has greatly increased the ambit of trade mark infringement.
I am not aware of any case in which the courts have been called upon to consider the question of comparative
advertising under the 1993 Act, but a number of authors are of the view that section 34(1)(a) can be used to
prevent comparative advertising. See for example "Intellectual Property and Comparative Advertising" by OH Dean
published in Stellenbosch Law Review 1996 1 where the following appears: