A trade mark can be defined as a sign, symbol, mark, indication used in relation to goods, services in the course of trade distinguishing the goods of one enterprise . Section 2 of the Trade Marks Act also defines a ‘mark” and “trade mark.” In Kellogg Co vs Cairns Foods Ltd the court stated that for a mark to be a trade mark, it must be used, in relation to goods or services for two purposes:
This write up seeks to discuss trademark infringement and defenses which can be raised after such an infringement. By registering a trademark an exclusive legal right on the part of the holder of the trademark to use it in respect of the goods for which it is registered is created. This position was elucidated in Zimbabwe Gelatine (Pvt) Ltd v Cairns Foods Pvt Ltd) where it was stated that it is common cause that once a trademark is registered it gives the registered owner of the trademark an exclusive right to use it concerning the goods for which it is registered.
Persons who purchase goods with the registered trade associate the goods with the owner of the trademark. Use of the trademark on goods other than those of the owner of the trademark is an infringement . The rationale behind the registration of a trademark is that no other party should use the trade mark.
Kerly’s Law of Trade Marks and Trade Names page 12 stated that the function of a trade mark is to give an indication to the purchaser of the trade source from which the goods come or the trade hands through which they pass on their way to the market.
In Anheuser-Busch the ECJ was asked to determine the conditions under which the proprietor of a trade mark has an exclusive right to prevent a third party from using his trade mark without his consent under a primary infringement provision. The ECJ affirmed that, the exclusive right conferred by a trade mark was intended to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfill its functions and that, therefore, the exercise of that right must be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods.’
In that regard, the owner of the trademark has a right to claim infringement if anyone starts using the same mark for the same goods or services where such is likely to cause confusion to consumers as to the source and origin of the goods. .In the case noted above, the court held that a person who believes his rights have been infringed can either proceed in terms of the Trade Marks Act if he has a registered trade mark.
A trademark serves as a badge of origin and Section 5(a) of the Amendment to the Trade Marks Act of Zimbabwe deals with primary infringement giving absolute protection to the trademark owner where a registered trade mark is infringed by any unauthorised use in the course of trade, whether as a trade mark or otherwise, of a mark that is identical to the registered trade mark or so nearly resembling it as to be likely to deceive or cause confusion, where that mark is used in relation to the same or similar goods or services as those in respect of which the trade mark is registered.
Article 16 (1) of the TRIPS Agreement prevents one from registering a trademark which is likely to deceive or cause confusion to consumers. The onus to prove that the use of a trademark is not likely to cause confusion rests upon the plaintiff on a balance of probabilities. In considering whether this onus has been discharged, the concept of global appreciation should be applied, that is a global appreciation of the visual aural and conceptual similarities in the marks in question .
The mark which would have been used by the defendant must be so nearly resembling the plaintiff’s registered mark as to be likely to cause confusion or deception. In considering whether the use of the respondent’s mark would be likely to deceive or cause confusion, regard must be had to the function of a trade mark, namely to indicate the origin of the goods in connection with which it is used. This requirement is flexible in the sense that it doesn’t require actual confusion and therefore the mere probability of confusion is enough to prevent the use of a trademark by others.
It must be borne in mind that the question of the likelihood of confusion is a matter of first impression and one should not peer too closely at the registered mark and the alleged infringement to find similarities or differences. Infringement occurs if the use creates an impression of a material link between the product and the owner of the mark.
The court must not consider the question of deception or confusion as if the purchaser of the goods will have had the opportunity of carefully considering the marks and even comparing them side by side. They must look at the marks as they will be seen in the marketplace and take into account a notional purchaser, a person of average intelligence, and proper eyesight. The test as to whether there has been an infringement depends on whether there is sufficient similarity which is likely to lead to confusion. First Mutual.. it was held that, the test as to whether there has been an infringement depends essentially on whether there is a sufficient similarity which is likely to lead to confusion,.
The test as to deception or confusion is that of a normal, average person. The concept of similarity should not be construed so widely as to create an unacceptable monopoly in the use of designs, in this case incorporating triangles. The word “similar” had to have its ordinary meaning, which is a “marked resemblance or likeness”, “marked” meaning “easy to recognize.”
The court in this case reiterated that by applying those considerations, the logo used by the respondents was not identical with or so nearly resembling the registered mark of the applicant as to be likely to deceive or cause confusion, as required by Section 8(1) of the Trade Marks Act.
In terms of the Trade Marks Amendment Act infringement also occurs where a mark that is identical to a registered trade mark is used as a trade mark in respect of the same goods or services as those in respect of which the registered mark is registered, it shall be presumed for the purposes of this section, unless the contrary is proved, that such use is likely to deceive or cause confusion. The use of identical marks on identical goods usually gives rise to confusion.
A trade mark may be deemed to be similar or identical if it reproduces the registered mark without modification or additional features which the average consumer might not notice. Similarity of the marks is assessed through the eyes of an average consumer who is reasonably well informed and observant.
Using marks which are similar on different goods is not an infringement and as such there are factors which should be taken into account to determine the infringement. By so doing the fact that a mark is registered in respect of goods in a certain class would not restrict the registration of a similar mark in respect of goods of a different class. The overall test to be applied when deciding the degree of similarity of the use of identical marks on different goods was clearly stated by Darke J in Pianotist Co Ltd’s Application , as follows:
“You must take the two words. You must judge them both by their look and their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”
The court also discussed the issue of the “kind of customer” who would purchase the goods or use the services of the parties in the present case. The judge stated that the average customer of the applicant in this case would wish to purchase or sell petroleum or petroleum products, or items related to the company outlets, whereas the normal customer of the respondent would wish to make inquiries and reservations regarding travel and accommodation in and out of Zimbabwe, and to purchase tickets in regard to such travel.
These two businesses are widely different in their respective fields of operation, and a normal, average person would be confused into wondering whether the respondent was associated with the applicant because the former was using a similar trade mark device to that used by the applicant. An evaluation of a certain territory may consequently come to the conclusion that no likelihood of confusion exists between two trademarks, as consumers may not be confused between a perfume producer and a producer of leatherwear.
Article 16(3) of the TRIPS provides for trademark infringement which doesn’t require confusion. This article applies to well-known trademarks which are well known as belonging to a particular trademark owner even without being registered. The determination of whether a trademark is likely to create confusion with a well-known mark will be reached by considering the question from the viewpoint of the consumers of the products to which the marks are applied.
The provision is since it stipulates that confusion occurs in cases of reproduction, limitation or translation of the well-known mark, or even if only an essential part of a mark constitutes a reproduction or confusing imitation of the well-known mark.
Ideally, a trade mark proprietor should take steps to enjoin infringing use as soon as possible after a third party commences use of a registered trade mark, such use amounting to infringement . The defendant may deny the allegations on which the plaintiff’s claim for infringement is based. A party can raise a defence of prior bona fide use which is designed to avoid the exercise of these rights merely on the basis of priority of registration and to preserve the common law rights that are antecedent to the rights of the registered proprietor.
A party relying on this defense must establish bona fide and continuous use of the mark, either by itself or by its predecessor in title, at a time prior to the use or registration of the registered mark by the proprietor thereof, whichever is earlier . Such continuous case should have commenced prior to the registration of a registered trademark.
Advocate General in the European Court of Justice in the Ansul case reiterated that when assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.
In Mobil Oil Zimbabwe (Pvt) Ltd vs Travel Forum (Pvt) Ltd the court stated that Section 10 of the Trade arks Act applies, and the common law rights acquired by the respondent by its prior use are protected by the provisions of this section. The court pointed out that by virtue of the provisions of this section, the respondent was protected in respect of those services in relation to which it was the prior user, and which are included in the later registration. Therefore, the trade mark owner can not object the registration of an identical mark by any person if such mark has been used continuously from a date earlier than the date of the first use.
The right of every man to use of his own name conflicts with the right of every man to be protected against passing off. Section 11 (1) (a) of the Trademark Act which specifies that such use must be bona fide, for the defence to suffice. The object of this defense is to ensure that the use by a man of his own name should be protected, provided that the user was bona fide, whether he traded under the name or whether he used it as a trademark in respect of his goods.
The right is not restricted to his use of his own name as the name of his business but also extends to his use of it as a mark on his goods.Dancknwerts J Stated that bona fide normally means the honest use by the person of his own name without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader.
He continued stating that in our judgement, if a trader is honestly using his own name then no action will lie for infringement of trademark and any rival trader who thinks himself aggrieved must sue, if at all, passing off. In other words, bona fide means in good faith hence it is not an infringement for any person to use his own name, in relation to his goods, so long as he has no intention to deceive anybody.
It is possible for the court to stay the infringement proceedings to enable the defendant to apply for registration on the basis of concurrent registration. The mark should have been in use for a reasonable period prior to the application date for one to raise a defence of concurrent registration. This means the other party, against which the applicant is claiming honest concurrent use, has a reasonable time in which to become aware of the applicant, and to make any challenge.
The general factors which should be considered in honest concurrent use include contingencies of confusion, whether the choice of the mark was honestly made, the nature of the trades of the respective parties, actual confusion, and, importantly, the duration of use. The defendant may also deny the allegations of infringement by raising a defence of consent. It is an essential element in the defence of consent that the failure of the claimant to act should have induced the defendant to believe that the wrong was being assented to. This defense works together with the defense of acquiescence which prevents a person, who having full knowledge of their rights and of the infringement of those rights, sits idly by without asserting them. By so doing the person who will be using a junior mark will believe that the owner of the original mark consented to its use either impliedly or expressly.
To add more, one can also raise a defense of bona fide use of words that are descriptive of goods or services offered. The use of the words must not be a mere device to secure some ulterior motive for example where the words are used in order to take advantage of the goodwill attaching to the registered trade mark of another.
The defendant can also raise a defense by way of attacking the validity of registration of the original trademark. This defence requires a defendant to attack the validity of the original trademark upon registration asserting that the way in which the original trademark was registered is invalid.
Section 12 (1) of the Trademark Act enlists the requirements that should be met in order for a trademark to be registrable thus if the defendant manages to prove that the requirements for registration of a trademark were not adhered to by the original trademark owner, then the junior mark can be registered. In conclusion, a person who register a trademark enjoys the exclusive right to use that trademark in the course of trade and no one is permitted to use it without the permission of the rights holder.
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