Conceptual basis of infringement
The modern concept of trademark infringement has its origins in the traditional common law delict of passing-off or theft by deceipt, whereby a competitor uses another’s mark to identify their own goods or services without authorisation. To succeed in a passing off action, the complainant had to prove ownership, repute or goodwill, and deceipt. Then, this task was relatively easy in view of the proximity and in some cases personal acquaintance that existed among the manufacturer, distributor and consumer.
However, over time and with the internationalisation of trade practices, the relationship and regulation of the maufacturer-distributor-end user triumvirate has become impersonalised. This has made proof of ownership, repute or goodwill and deceipt in passing-off actions cumbersome and costly to most victims.
The situation was compounded by the transfamatory nature and scope of trademark functions, culminating in the neeed for laws that regulated the infringement of registered trademarks. Under such legislation, the common underying theme was the promotion of fair and efficient competition in manufacturing and distribution processes.
Benefits of legislative infringement
Not only did this make it easier and cheaper for legal action to be carried out than the common law action of passing-off, but this carried with it some unique derivative benefits. These included protection of the registered mark from infringement even where it is not currently in use (for a limited time of course); absolution from proving ownership, repute or goodwill of the mark, and dispensation with proof of actual or potential damage as prerequisite requirements.
Legislative infringement function-based
There are three types of statutory infringement, all of which are distilled from the modern era nature and function of trademarks, namely: as indicators of source or origin, aptness to distinguish or identify between various products and their traders, ability to signify derivative consistent quality and satisfication of the products to which they are affixed. In other words, we are concerned with what is commonly termed a consumer trademark, whose monopolistic character is pervassively all-inclusive of its perceived modern functions.
Indicators of source or origin: This type of infringement relates to the use of an identical or similar mark to that of the registered proprietor. By “similar” here is meant the offending mark “so nearly resembles” the registered mark such that it is likely to cause deception or confusion as to the source or origin of the goods or services –– the typical passing-off situation. As such, this type of infringement focuses attention on commonplace trademarks.
Quality guarantee: Not only does the unauthorised use of identical or similar marks over identical or similar products to that of the registered proprietor confuse or deceive consumers as to their source or origin, but ultimately adulterates their quality gurantee function. This is particularly so in this modern world of immense imbalances in access to information where we rely on previous constant quality and satisfication attached to the affixed trademark.
Meanwhile, marketplace realities reveal that the world is a restive hive of obscure and yet complicated business comprising multinational enterprises, licencees, fly-by-night entrepreneurs, and supra-national traders amongst which refined and subtle predators menacingly lurk. As such, this type of infringement caters for distinctively unique or well-known marks.
Advertising and sales: This type of infringement focuses attention on the protection of famous marks by virtue of their uniqueness and singularity in marketing the products to which they are affixed. In recognition whereof the law seeks to prevent damage likely to be caused both to the proprietor’s business and the mark’s integrity through dilution either by blurring or tarnishing. As such, this infrigement is a recent innovation whose purpose is to preserve the repute and goodwill associated with the mark.
Exclusions to infringement
Exclusions to infringement serve to circumscribe the scope of monopoly bestowed upon the proprietor of the registered trademark or famous mark with a view to promoting the progress of industry and commerce. These are based on the concept of fair practice by which an act which would ordinarily constitute infringement would be exonerated if done in good faith or with bona fide intention, among other things:
l Use of one’s or their predecessor’s name or place of business;
l Any description or indication of the nature or characteristics of one’s products, including their kind, quality, value, intended purpose, geographical origin, mode or time of production or rendering of services;
l Parallel importation or trade in “grey products”;
l Use of any utilisation features of registered trademarks and
l Where use is within the confines of limitations entered into the trademark register against the registered mark.
The availability of effective remedies is essential in deterring trademark infringers, compensating trademark proprietors and promoting fair trade practices – without which rules pertaining to trademark registration and protection would be of no benefit, force or effect. In which regard hereunder is briefly stated five common alternative remedies available in most jurisdictions.
Interdicts are court orders which either restrain the offender (prohibitory) or compel the defendant to perform a positive act (mandatory). They are either interlocutory or pendente lite (pending institution or finalisation of the main action) or final, ie, issued at the finalisation or closure of the main proceedings. Thus, the complainant in an infringement action has at their disposal the search for temporary relief or final relief subject to meeting certain prerequisite requirements thereto.
Removal of infringing mark
This remedy is additionally made available where, despite a prohibitory interdict, the possibility of further infringement is very high as the defendant still has in their possession means to commit further acts of infringement. Under the circumstances, an additional order for delivery up of the offending materials to the complainant would be concurrently applied for. This type of order is viewed as enhancing the efficacy of the interdict.
Damages are aimed at compensating the proprietor for the actual or potential patrimonal loss they would have sustained through acts of infringement.
These include loss of profits with respect to the infringing articles which the proprietor would have made were it not for the infringement. This being a delict, the proprietor bears the burden of fault in the form of either intent or negligence.
In the alternative to damages, the proprietor may claim reasonable royalties which would have been payable by a licencee for the use of the trademark. By implication, the provision of reasonable royalty enables the proprietor to receive compensation even where actual damage has not occurred or been proven.
Anton Piller Orders
Conceived in England in 1976, this remedy has as its purpose the acquistion and conservation of evidence in contemplated subsequent infringement proceedings.
The information acquired normally relates to the identity of infringers; origin, nature and extent of infringement; profits realised as a result thereof, and the whereabouts of the infringing articles, materials and aids. Its value lies in that it is instituted ex parte ie without prior notice to the other party, so as to catch them unawares before they have time to destroy or dispose of the evidence or incriminating matter.