A trademark for purposes of the Trademarks Act Chapter 26:04, is a mark, sign or symbol applied by an entrepreneur to distinguish his products or services from those of other traders. They may be divided into two groups, firstly those that distinguish the products and services of a business and secondly those that identify the business as such. A package would fall into the first group whilst a trade name such as Coca – Cola would fall into the second category.
It is also any sign capable of being represented graphically including any device, name, signature, word, letter, numeral, shape, configuration, ornament, colour or container or any combination of the aforementioned.
The main function of a trademark is to distinguish the goods and services of one competitor from those of another competitor. In other words it indicates the origins of a product or a service. An example would be the giving of “Ecocash” a trademark to distinguish it from “Telecash.” In the absence of a trademark being applied to the goods offered it would be impossible for a consumer to choose a product. Trademarks therefore help consumers associate with a product and develop a preference attributed to quality and characteristics.
As customers begin to identify with a certain product they will develop a preference to it meaning a company’s’ ability to attract customers increases and this gives rise to the creation of goodwill. Therefore, a trademark can also create goodwill. For this reason a trademark is extremely valuable. As it is of economic value, the law affords protection against unlawful use of a company’s trademark by other traders. What must be emphasized is that only a registered trademark can be afforded protection by the Trademarks Act. In terms of section 6 Of the Trademarks Act Chapter 26:04, registration is an absolute pre – requisite for the institution of an action based on infringement of a mark. There are also common law provisions available for the protection of a mark and these have not been abrogated by the Trademarks Act. Infringement for purposes of trademark protection is the unauthorized use of a mark as its owner has the exclusive right to use his registered trade mark.
In terms of section 8 of the same Act, unauthorized use can occur in the course of trade in respect of the same goods or services in respect of which the mark is registered; or by the creation of a mark that so nearly resembles the registered trade mark, that it is likely to cause deception or confusion. Unauthorized use can also occur where the trademark is not directly utilized to identify the goods and services of an infringer, for example in a comparative advertisement or for goods or services in another industry such as opening a company called “Vaseline cars.”
The common law actions that are available are based on an interdict; an order for the removal of the infringing mark or delivery of the goods in question; Anton Pillar orders; damages and payment of a reasonable royalty. An interdict being the prevention of an actual or threatening act means the remedy is provided before the infringing act commences and little or no damage will be suffered and no damages can consequently be claimed. In the case of PepsiCo v UTC 1988 2 SA 344 
it was shown that an interdict can also be provisionally granted to ward off further harm pending an action for damages. The interdict is therefore dealt with simultaneously with the action for damages.
Anton pillar orders authorize the legal representative of a trademark holder to enter the premise of the infringer in the presence of the Sheriff to confiscate any evidence of the infringement of the trademark for safekeeping with a view to the institution of an infringing action. It is possible to obtain an interdict in conjunction with an Anton pillar order.
An action for damages can be brought about where patrimonial loss has been suffered thus the value may be recovered from the wrongdoer. In the case of Atlas Organic Fertilisers V Pikkewyn Ghwano 1981 2 SA 173 (T) the proof of damages suffered was shown by the turnover and profit for the period preceding and after the infringement. The payment of royalties which would have been payable to an infringed is also possible. These can be assessed if a licence had been granted to the infringer prior the infringement as an alternative to an action for damages. This remedy is especially suited where it is difficult to prove the extent of the damages sustained.
The author of this article can be contacted at rumbidzai@chinawalawchambers.com (written in her personal capacity for information only).
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