Common Law Tort of Passing Off – Trademark

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A question that inevitably arises is whether the brands enjoy protection in South Africa and, if so, to what extent. South African trademark law is a hybrid legal system governed by common law and various pieces of legislation.

South Africa is a first country of use and therefore trademark registration is not mandatory to obtain trademark protection and defend against unauthorized use of a trademark. Mark. Unregistered trademarks are protected and can be defended under the tort of passing off.

Deception occurs when there is a misrepresentation (misrepresentation) directly or indirectly by a trader to the public that his business is that of a competitor, or that it is associated with that of a competitor.

In order to be successful with a claim based on deception, the following key elements must be established:

  1. Goodwill or reputation in the company:

The onus is on the company to prove that it has built up a considerable reputation in the relevant industry and has therefore acquired substantial common law rights in the relevant mark.

  1. that there was a a false statement, direct or indirect, likely to confuse the mind of the public:

There must be a likelihood that members of the public in the relevant industry will be confused and/or deceived into believing that the trader’s goods or services are associated with, or endorsed by, a competitor.

  1. That this misrepresentation has caused, or is likely to cause, damage to goodwill or the reputation of the business:

If such confusion or deception occurs, there must be a chance that the business will suffer irreparable damage to the goodwill or reputation that is vested in the brand.

Passing off and trademark infringement are two actions that trademark owners can rely on to assert or defend their rights. Pursuing claims can be a difficult and expensive process to enforce, as proving the manifestation of these key elements is not as simple as it sounds. Accordingly, trademark owners are advised to obtain statutory law protection through registration rather than relying on their common law rights.

In summary, some key differences between passing off and trademark infringement are outlined below:


Registered rights:

Common law recourse in the event of misleading marketing.

Legal recourse

Is concerned with the protection of unregistered marks.

Is concerned with the protection of trademarks.

The rights are established as and when used.

Protection is available upon registration.

It is essential to prove the key elements (traffic, damage and misrepresentation).

Registration is sufficient.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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