"Use of another's registered trade mark in comparative advertising could constitute trade mark infringement in terms of
paragraphs (a), (b) or (c) above and in terms of the provision protecting wellknown foreign trade marks.
To sum up, under section 34(1) of the 1993 Trade Marks Act, a registered trade mark can be infringed unconditionally by a
comparative advertiser if it is used in relation to goods/services for which the mark is registered or which have an affinity
with such goods/services .
Page 510 of [1999] 1 All SA 502 (C)
The limitations upon infringement of a registered trade mark through use in comparative advertising under the 1963 Trade
Marks Act, namely that the goods or services must be the actual goods or services for which the trade mark is registered
and that the use complained of must cause injury or prejudice to the trade mark proprietor, have for all practical purposes
fallen away. The Trade Marks Act 1993, thus prohibits the use of trade marks in comparative advertising far more
comprehensively than its predecessor. The inference can be drawn from this that the legislature, in enacting the Trade
Marks Act, 1993, was concerned that there should be greater obstacles in the way of using trade marks in comparative
advertising than was previously the position. Put differently, the legislature in 1993 viewed the use of trade marks in
comparative advertising more negatively than in the preceding years."
See also the chapter by CK Job "The Infringement of Trade Mark Rights" in The New Law of Trade Marks and
Designs edited by Coenraad Visser, and "Comparative Advertising A Change in Attitude?" By Tanya Woker in South
African Mercantile Law Journal 1995 (7) 239. In the latter article the author writes:
"Section 34(1)(a) is wide enough to encompass both the concept of passing off and comparative advertising. Where an
entrepreneur is dealing with the same goods and services in respect of which there is a registered mark, he cannot use an
identical of confusingly similar trade mark. In other words he cannot use an identical mark to identify his own products and
he cannot use a registered trade mark against which to compare his products as both actions would amount to a
contravention of section 34(1)(a)."
Webster and Page hold a similar view for at paragraph 12.18.2 on pages 1236 where they state:
"In its simplest form such advertising would be blatant, for example 'CHEAP
View Parallel Citation
washing powder, it washes cleaner and brighter than OMO' where OMO is a trade mark registered in respect of washing
powders. Assuming that the use is unauthorised the other provisions of section 34(1)(a) are clearly met as the identical
mark is used in relation to the goods in respect of which the trade mark is registered and the use is clearly in the course of
trade. Such advertisements would, accordingly constitute trade mark infringement."
For the sake of completeness, I should mention that I was also referred to an article by Ron Wheeldon entitled
"Brand Comparative Advertising: Is it unlawful, really?" which was published in De Rebus September 1996 at 585.
This author holds the contrary view to the views referred to above. His argument is based on the fact that the
concepts contained in section 44(1)(a) and (b) of the 1963 Act referred to above were not carried over into the 1993
Act and the application of section 15 of chapter 3 of the 1993 Constitution which guaranteed the right of freedom of
speech and expression. However, he does not, as the other authors do, analyse the effect of section 34(1)(a) of
the 1993 Act.
In argument Mr Louw conceded that the use of the brochures in which the comparison of the marks was made
was in the course of trade (a concession which I may say I believe was correctly made), but argued that the use by
the second respondent of the first applicant's trade marks did not amount to an infringement because the second
respondent made it clear in the publication that ABBOTT and PROMALIN were the registered trade marks of the first
applicant and that the marks had been used with reference to the "genuine"
Page 511 of [1999] 1 All SA 502 (C)
goods to which they related. This argument was based upon the principle established under the 1963 Act that the
use of a trade mark in relation to genuine goods could never amount to a trade mark infringement and in particular
on the judgment in:
Protective Mining and Industrial Equipment Systems (Pty) Ltd v Audiolens (Cape) Pty Ltd 1987 (2) SA 961 (A) in
which Grosskopf JA undertook an exhaustive examination of the history and development of the trade mark
legislation in this country and in the United Kingdom. The Protective Mining case concerned the parallel importation
into this country of socalled "grey" goods. The appellant was an authorised distributor in terms of a distribution
agreement concluded with the proprietor of the trade mark "Pentax" of Pentax cameras, accessories, binoculars
and telescopes in South Africa. The respondent imported genuine Pentax products which it had purchased not from
the manufacturer, but in Hong Kong. These articles could be sold profitably at prices lower than those charged in
the retail trade for similar articles imported by the appellant. The appellant was obliged to service Pentax products
in South Africa and the respondent represented to its customers that the appellant would honour guarantees in
respect of products sold by the respondent. The appellant accordingly applied for an interdict on the basis of the
respondent's unlawful competition visàvis the appellant in respect of the representations in the guarantee and
also on the basis that the respondent was unlawfully competing with the appellant by infringing the trade mark
"Pentax". The learned Judge concluded that the use by the respondent in the circumstances set out did not
constitute infringement for,
View Parallel Citation
"... I have no doubt that, in view of the historical background, the intention of the Legislature was that the expression 'use as