Our courts confirm again additional protection offered by registered trade marks

Our courts confirm again additional protection offered by registered trade marks

Trade mark protection today is not just for words (e.g., NIKE® for shoes), personal names (e.g., LOUIS VUITTON® for handbags), logos (e.g., the Starbucks® mermaid for coffee). In fact, what most proprietors don’t realise, is that trade mark laws permit trade protection, equally, for in three-dimensional shapes, colours, scents, sounds, flavours, textures, and other “non-traditional” marks that identify and distinguish the source of goods or services.

In another brand new judgement, our courts have again confirmed that protection can be claimed for non-traditional trade marks, even where the article of protection is obscured from view when in use.

In March 2019, the Pietermaritzburg high court found a Chatsworth shoe company guilty of trade mark infringement of two registered trade marks owned by Bata Brands. Bata’s marks relate to the male and female shoes known as Bata Toughees. (Again, we stress: these were registered as trade marks, and not as registered designs). They are represented below:

 

The infringing shoe had a sole design depicted below:

 

You might be thinking of registered designs, which provide protection exclusively for the appearance of an article (specifically: it’s shape, configuration, ornamentation or pattern). But that is precisely the point: there is now a well-recognised overlap of protection available for the subject matter in the realm of trade marks.

The court agreed that: “The sole serves to assist customers who are illiterate, to identify the Toughees shoes by visual symbols of the sole design more readily”.

The lesson to be learnt here is: if you manufacture a product having a peculiar appearance, you would be well-advised to consider both trade mark and registered design protection: holding one does not prevent you from holding the other. And, as we see again in the Bata judgement, these registrations of non-traditional trade mark provides exceptionally effective protection.

 

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