Unable to trademark your brand? Waiting impatiently for the Companies and Intellectual Property Commission (CIPC) to register your trademark application?
Just because your brand is not registered or registrable, does not mean it’s not worthy of protection or capable of externalisation and all of the concomitant tax benefits!
Although trademarking is the legislated way to enforce protection of your brand, if you do find yourself in a “trademark-less” position, all is not lost!
Owners of brands who have built a hard-earned reputation are still protected by the common law remedy of “passing off”. So, how do you nail an unknowing or unscrupulous imitator?
The Holy Trinity of “Passing-off”
Well, there are three key legal ingredients of passing-off.
Firstly, your brand must have a reputation! In this regard, distinctiveness, sales figures, marketing spend, and the period of use are key factors.
Deception is the second vital ingredient – the litmus test being the likelihood that consumers might be deceived by the similarities between your name and that of the alleged infringer.
Lastly, damages in the form of a loss of sales attributable to the deception must be quantifiable.
In a proudly South African case Ramsay, Son and Parker (Pty) Ltd v Media 24 Ltd & Another, the publisher of Getaway magazine proceeded against that of Wegbreek, a translation of the former.
Getaway established its reputation by relying on various factors including that it had been in publication for 15 years and won ample leisure, entertainment, travel and wildlife awards.
- Both were glossy colour publications of a similar size and weight;
- Both were aimed at the same readership;
- The content would ‘appropriately fit’ into one another; and
- The feature articles were very similar. In this regard, Wegbreek audaciously featured “Moegoe van die Maand” literally translated into Getaway’s “Mug of the Month”.
No prizes for guessing that Wegbreek never ‘Gottaway’ and are now deservedly and literally, ‘weg’.
We Can Help!
Imitation may be the sincerest form of flattery, well, except when the imitator takes the fame and your money. Don’t let copycats getaway—contact us! We’re the go-to IP law firm for entrepreneurs and SMEs and our fees are feasibly structured!
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