What Happens If Someone Uses Your Trademark Without Permission?

 

Registering a trademark gives a business important legal protection over the distinctive signs that identify its goods or services. However, problems can arise when another business begins using the same or a confusingly similar mark without permission. This can confuse customers and potentially damage the reputation and goodwill attached to an established brand. So, what can you do if you believe someone else’s conduct amounts to trademark infringement in South Africa?

If someone uses your registered trademark without permission, their conduct may amount to trademark infringement under South African law. Depending on the circumstances, the trademark owner may be able to obtain an interdict, claim damages or pursue other legal remedies.

Discovering that another business is using your brand name, logo or a similar mark can be concerning, but not every unauthorised use will necessarily constitute infringement. The nature of the mark, how it is being used, and the scope of your trademark registration all need to be considered. Below, we explain what trademark infringement means, how it can arise and what registered trademark owners can do to protect their rights.

What Is Trademark Infringement In South Africa?

Before taking action against another person or business, it is important to establish whether their conduct falls within the protection provided by your trademark registration. South African trademark law recognises several circumstances in which the rights attached to a registered mark may be infringed.

Using An Identical Or Similar Mark

Under the Trade Marks Act 194 of 1993, infringement can arise where an unauthorised person uses a mark that is identical to a registered trademark, or so similar that it is likely to deceive or cause confusion, in relation to goods or services covered by the registration.

The Act also protects in certain circumstances involving similar goods or services and, for qualifying well-known registered marks, uses that may unfairly benefit from or harm the distinctive character or reputation of the registered trademark.

This means trademark infringement is not limited to someone making an exact copy of your logo or business name.

The Context Of The Use Matters

Similarity between two marks is an important consideration, but it is not the only issue.

How the mark is being used, the goods or services involved, and the likelihood of deception or confusion may all be relevant when assessing possible infringement.

For example, relatively small differences in spelling, design or presentation do not necessarily prevent a legal dispute if consumers could still be confused about the origin or connection of the respective goods or services.

Does Your Trademark Need To Be Registered?

Registration is particularly important when relying on the statutory infringement remedies available under the Trade Marks Act.

Registered Trademarks Receive Statutory Protection

Registration provides the proprietor with exclusive rights to the trademark in relation to the goods and services for which it is registered, subject to the provisions of the Act.

The scope of your registration therefore matters when considering whether another party’s conduct constitutes trademark infringement. This is one reason choosing the appropriate trademark classes and accurately describing the relevant goods or services during registration matters.

What If Your Trademark Is Not Registered?

An unregistered brand is not necessarily left entirely without legal protection.

Depending on the circumstances, a business may rely on the common-law remedy of passing off where another party misrepresents that its goods or services are connected with the established business and this causes, or is likely to cause, damage to its goodwill.

Passing off and statutory trademark infringement are distinct legal causes of action, however, and different requirements must be established. Obtaining advice about the appropriate remedy is therefore important before commencing proceedings.

What Should You Do If Someone Is Using Your Trademark?

Discovering potentially infringing use can create pressure to act immediately. However, a considered approach can help you assess the strength of your position before deciding how to proceed.

Gather Evidence Of The Unauthorised Use

The first step is generally to preserve clear evidence of how the other party is using the mark.

Depending on the situation, this could include screenshots of websites or social media pages, advertisements, packaging, photographs, invoices or other examples showing the mark in commercial use.

It can also be useful to record when you first became aware of the conduct and where the potentially infringing goods or services are being offered.

Confirm The Scope Of Your Registration

Then review your trademark registration carefully.

This includes confirming the registered proprietor, the mark itself and the goods or services for which protection was obtained. You can then compare the alleged infringing conduct with the rights provided by the registration.

This assessment can help determine whether there are reasonable grounds for a trademark infringement claim and what response may be appropriate.

Can You Send A Cease And Desist Letter?

Court proceedings are not necessarily the first step in every trademark dispute. In some cases, you can address the issue before litigation becomes necessary.

A Formal Letter May Resolve The Dispute

An attorney may send a formal letter notifying the other party of the registered trademark rights and requesting that the potentially infringing conduct cease.

Depending on the circumstances, the letter may also request other appropriate undertakings relating to the continued use of the mark.

A carefully drafted letter can sometimes resolve the matter efficiently, particularly where the other party was unaware of the existing registration.

Avoid Making Unfounded Threats

Trademark owners should nevertheless obtain legal advice before making aggressive allegations or threatening proceedings.

Whether infringement has occurred is a legal question that depends on the particular facts and the scope of the registered rights. Having the matter assessed first can help ensure that any correspondence accurately reflects the trademark owner’s legal position.

What Legal Remedies Are Available For Trademark Infringement?

Where informal attempts to resolve the dispute are unsuccessful, or where urgent intervention is required, the Trade Marks Act provides remedies for infringement of registered trademarks.

An Interdict May Stop Further Use

One of the most important remedies is an interdict preventing the infringing party from continuing the unlawful use.

This can be particularly important where continued use risks confusing customers, weakening the distinctiveness of the registered mark or causing ongoing commercial harm.

The Act also provides for the removal of the infringing mark from material and, where that is not reasonably possible, the delivery up of infringing material.

Damages Or A Reasonable Royalty May Be Available

Depending on the circumstances, a successful proprietor may also seek damages arising from the infringement.

Alternatively, the Act provides for a reasonable royalty that a licensee would have paid for use of the trademark. The appropriate remedy will depend on the facts of the particular case.

These potential consequences show why both trademark owners and businesses accused of trademark infringement should take disputes seriously and seek advice early.

How Can Businesses Reduce The Risk Of Trademark Disputes?

Protecting a brand should ideally begin long before infringement occurs. A proactive trademark strategy makes it easier to spot problems and enforce rights when needed.

Register Important Brand Assets

Businesses should consider registering commercially important brand names, logos and other eligible marks rather than relying solely on their use in the marketplace.

Before filing an application, conducting appropriate searches can also help identify existing trademarks that may create difficulties.

Monitor Your Brand

Registration alone does not prevent competitors from using similar branding.

Businesses should monitor the marketplace and act appropriately when they identify potentially problematic use. Early intervention may prevent confusion from becoming established and can sometimes make a dispute easier to resolve.

Trademark infringement can threaten the identity, reputation and commercial value that a business has built around its brand. However, seeing another business use a similar name or logo does not automatically establish infringement. You need to assess registered rights carefully, similarity between the marks, relevant goods or services, and the manner of use.

If you discover potentially unauthorised use, preserve the evidence and obtain advice before deciding how to respond. Acting promptly and strategically can help protect valuable trademark rights while ensuring that the law supports any enforcement action.

At Burnett Attorneys & Notaries, we help businesses protect and enforce their intellectual property rights. Our team can advise on trademark registration, assess potential infringement, assist with cease-and-desist correspondence, and guide you on the legal remedies available when trademark rights are threatened. Contact us to arrange a confidential consultation.