Normally someone registers a TM in order to protect that mark at law and to more easily form the basis for a claim of TM infringement. This does not mean that an unregistered mark will not have any protection.

An unregistered mark can offer protection but it is less easy to establish and prove common law TM rights. An action based on the infringement of common law rights in and to a mark will take the form of a claim of unlawful competition or passing off in terms of South African law, as opposed to an action for TM infringement (which is easier to prove). A registered TM is therefore an essential element for being able to bring an application for TM infringement.

It is important to make this distinction as the risk associated with the use of a registered TM and the use of a TM protected only at common law will differ based on the ease of successful prosecution.

If the mark in question is not registered an application cannot be brought in terms of TM infringement but must be brought as an action for passing off.

Passing off requires that the following must be proved in order to succeed in an action for passing:

  1. An existing goodwill or reputation in the name or mark, sufficient to demonstrate that the name or mark is linked in the minds of the public with the applicant;
  2. The respondent using the mark unlawfully has represented itself in association with the mark in a manner which is likely to confuse or deceive the public;
  3. The deception has caused or is likely to cause damage to the applicant’s goodwill.

The applicant will therefore have to prove both the existence of goodwill and the likelihood of the public being deceived or confused by the unauthorised use of the common law mark.

Further, in the case of infringement of a registered TM, the third party using such registered TM will have to show that they are NOT infringing the mark. In the case of an unregistered mark, as is this case, in order to prevent the use of an unregistered TM by a third party, and to be successful in an unlawful competition or passing-off action, it is necessary for the applicant to prove that, as a result of the use it has made of the trade mark, it has developed a reputation in the mark (this being the goodwill aspect), and that the use of the mark complained of is likely to give rise to confusion in the minds of the public, as a result of the existence of this goodwill or reputation.

Goodwill or reputation is hard to establish and prove and involves collating and adducing substantial evidence of use. I will not at this stage go into detail about how this would need to be proved and how this is generally assessed at law.

Finally, a registered TM will offer protection countrywide in the class registered whereas an unregistered TM will normally only offer regional or geographically limited protection unless it can be established that the goodwill in such mark exists countrywide.