"34.
Infringement of registered trade mark.
(1)
The rights acquired by registration of a trade mark shall be infringed by
(a)
. . .
(b)
. . .
(c)
the unauthorised use in the course of trade in relation to any goods or services of a mark which is
identical or similar to a trade mark registered, if such trade mark is well known in the Republic
and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the
distinctive character or the repute of the registered trade mark, notwithstanding the absence of
confusion or deception: Provided that . . ."
(The provisions of the proviso are not relevant to this application.)
The section contains the socalled antidilution provisions and was introduced into the Act only in 1993. In
"Misappropriation of the advertising value of trade marks, trade names and service marks" in J Neethling (ed)
''Onregmatige Mededinging/Unlawful Competition;" verrigtinge van 'n seminaar aangebied deur die
Departement Privaatreg van Die Universiteit van SuidAfrika op 3 November 1989 (1990), Prof BR Rutherford
explains the reason for the introduction of antidilution provisions in trade mark legislation as follows:
"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 in order 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. The proprietor of the
trade mark usually expends vast sums of money through advertising in order to build up the reputation and selling
power or advertising value of his trade mark. The growth of his business is dependent upon the growth of the
meaning and importance of his trade mark. It is therefore only fair that he should be entitled to protect this
valuable asset against misappropriation. Moreover, a misappropriator should not be allowed to obtain a
promotional advantage for his product at the expense of the trade mark proprietor. Misappropriation of the selling
power or advertising value of a trade mark is commercially injurious to the trade mark proprietor and results in
the impairment of the goodwill of his business. It is submitted that such conduct is, in principle, unlawful and
constitutes an infringement of his right to goodwill."
(Also quoted in Webster and Page: South African Law of Trade Marks paragraph 12.24 at 1243.)
[5] The provisions of section 34(1)(c) have received little attention from our courts but in Bata Ltd v Face Fashions
CC and another 2001 (1) SA 844 (SCA) Melunsky AJA held at 851EG:
Page 458 of [2003] 2 All SA 454 (C)
"A plaintiff who relies upon an infringement in terms of s 34(1)(c) needs to establish:
(a) the defendant's use of a mark identical or similar to the plaintiff's registered mark;
(b) that the use
(1)
is unauthorised; and
(2)
is in the course of trade; and
(3)
would be likely to take unfair advantage of or be detrimental to, the distinctive character or the repute of
the plaintiff's registered mark; and
(c) that the plaintiff's registered mark is well known in the Republic."
See also Triomed (Pty) Ltd v Beecham Group plc and others1 2001 (2) SA 522 (T).
[6] When dealing with the concept of "similar" in section 34(1)(c), the court in the Bata case (supra) held as
follows at 852BD:
"'Similar' must obviously be construed in the context in which it appears and, in my view, it should not be taken
too wide or extensive an interpretation for the purposes of s 34(1)(c). The section, while seeking to preserve the
reputation of a registered mark, introduces a new concept into South African law. If the word 'similar' is given too
extensive an interpretation the section might have the effect of creating an unacceptable monopoly to the
proprietor of a trade mark and thus unduly stultify freedom of trade. I doubt whether the Legislature could have
intended such a result. I am inclined to hold, therefore, that the section does not apply if the two marks are similar
merely because they contain features of the same kind or because there is a slight resemblance between them. In
The Oxford English Dictionary vol XV at 490 one of the meanings given to 'similar' is 'having a marked
resemblance or likeness'. This seems to be an appropriate meaning to be given to the word for the purposes of
the section."
In my view, there is a marked resemblance or likeness between the applicant's registered mark and the mark
used by the respondent. The respondent's mark is clearly intended to refer directly to the applicant's mark. It
is similar in colouring, the lettering is similar and the overall effect is similar. The respondent does not deny
that it is using a mark which has a marked resemblance or likeness to the applicant's mark. Mr Nurse, the sole
proprietor of the respondent and deponent to the affidavit filed in answer to the applicant's founding affidavit,
testified that
"SAB have objected primarily to our use of their brand, rather than the social comment that our Tshirt makes."
and