By Karen Kitchen – Trade Mark Attorney and Independent IP Consultant at Bredenkamp IP Attorneys
In the recent judgement by Chetty, J regarding the trade mark dispute between the ANC and MK parties, with particular regard to his assessment on whether or not the MK’s use of its trademarks constitutes trade mark infringement under section 34 (1)(a) of the South African Trade Marks Act, I have made some observations.
*Side note: Even though these issues may be considered moot, Chetty J pronounced on these merits i) in the interest of saving time if the matter is successfully taken on appeal by the ANC, and these issues have to be considered by an appeal court and ii) given the legal importance of the matter as well as iii) the future conduct of the parties.
Authorisation by the IEC
The Judge indicates that there is no “unauthorised use” by MK of its marks in contention given that it was authorised by the IEC to use such name and branding by virtue of it being approved and registered as a political party in September 2023.
KK: A fair point in my view.
Visual Distinctions
The Judge seems to be of the view that the mark that is registered by the ANC (*acquired by way of an assignment from Legacy Projects NPO with an effective date in September 2023) that comprises of a fighting warrior device registered in black and white on the Trade Marks’.
Register i.e. can be differentiated from the MK’s fighting warrior device which has a distinctive and “bold green background” – thus, in his opinion, voter confusion will likely not transpire given these visual differences as between the fighting warrior marks when compared.
KK: I disagree with this point – trade marks, when compared for trade mark infringement purposes under section 34(1)(a), do not need to be identical but must be confusingly similar. Whilst the MK’s mark indeed utilises a bold green background, the central and arguably dominant feature is a fighting warrior device that appears, to my eye, to be very similar in appearance and angle to the ANC’s registered mark, albeit differing in the positioning of the spear.
Registered Mark v Actual Usage
The Judge also indicates that the mark registered by the ANC i.e. is not the mark actually being used on the ballot papers by the ANC, which would be the ANC’s current branding i.e. versus the MK’s fighting warrior device together with the MK element, i.e. . As such, he makes the point that the marks in use are different, which will also likely avoid any confusion amongst the average voter, constituting voters of reasonable intelligence.
KK: This is an interesting point, but for trade mark infringement purposes, we need to look at the mark as registered and cannot wholly disregard it based on the position in use.
Scope of Services
The Judge also holds that the services covered by the ANC’s registered mark in class 41, which includes education, entertainment, cultural activities including legacy projects and the like, are dissimilar to political activities such as political lobbying and the like. Therefore, reliance cannot be placed on this registered right for purposes of the section 34(1)(a) trade mark infringement enquiry.
KK: I think this point is strong– the ANC’s registered right is thin given the limited specification of services, which doesn’t seem to include political electioneering and lobbying activities.
Stay tuned for further analysis as next I will be dealing with the Judge’s views on section 34(1)(c) and Passing Off.
