Tak­ing steps to pro­tect your get-up

The dis­tinc­tive look-and-feel fea­tures of a brand are equally im­por­tant

Business Day - Business Law and Tax Review - - BUSINESS LAW & TAX REVIEW - ALI­CIA CASTLE­MAN & JOSEPH GOEDHALS

THERE are cur­rently nu­mer­ous words, de­vices, slo­gans and/or lo­gos on the Trade­marks Reg­is­ter which in­di­cate that brand own­ers are aware of their right to pro­tect their most ba­sic form of in­tel­lec­tual property, namely the names and/or lo­gos of their brands.

How­ever, brand own­ers more of­ten than not tend to ne­glect to pro­tect the fea­tures of their brand which the brand owner’s mar­ket­ing depart­ment, mar­ket­ing agency or em­ploy­ees ex­pend the most time, money and ef­fort on to de­velop and pro­mote. Mem­bers of the pub­lic ul­ti­mately come to as­so­ciate these with the brand, namely the lookand- feel of a prod­uct or, in other words, the get-up of a prod­uct.

This is rather con­cern­ing con­sid­er­ing that in the cur­rent com­pet­i­tive en­vi­ron­ment more and more com­pa­nies in, for ex­am­ple, the US are pro­tect­ing the look-and-feel of its prod­ucts in or­der to de­ter com­pe­ti­tion and third­party in­fringe­ment.

Sec­tion 2 of the Trade­marks Act No 194 of 1993 de­fines a mark as “any sign ca­pa­ble of be­ing rep­re­sented graph­i­cally in­clud­ing a de­vice, name, sig­na­ture, word, let­ter, nu­meral, shape, con­fig­u­ra­tion, pat­tern, or­na­men­ta­tion, colour or container for goods or any com­bi­na­tion of the afore­men­tioned”. A trade­mark is de­fined as a mark used or pro­posed to be used in re­la­tion to goods or ser­vices for the pur­pose of dis­tin­guish­ing those goods or ser­vices from the same kind of goods or ser­vices from those of oth­ers in the trade.

Sec­tion 9 pro­vides that a trade­mark shall be ca­pa­ble of dis­tin­guish­ing if it is in­her­ently ca­pa­ble of so dis­tin­guish­ing or if it is ca­pa­ble of dis­tin­guish­ing by rea­son of prior use. In essence, pro­vided that the cri­te­ria, as pro­vided for in sec­tion 9, are met any­thing that can be seen or rep­re­sented graph­i­cally can be pro­tected as a trade­mark.

In the re­cent US de­ci­sion of Mixed Chicks LLC v Sally Beauty Sup­ply LLC, Mixed Chicks in­tro­duced a unique range of hair care prod­ucts un­der the trade­mark Mixed Chicks. The de­sign of the bot­tles of the Mixed Chicks line of prod­ucts is very unique in that the bot­tles are translu­cent, the colour of the con­tent of the prod­ucts vary depend­ing on the type of prod­uct and prom­i­nent or­ange let­ter­ing fea­tures on the bot­tles. A much larger com­peti­tor, Sally Beauty Prod­ucts, in­tro­duced the same range of prod­ucts, un­der the name Mixed Silk, us­ing bot­tles that were ex­actly the same shape as the Mixed Chicks bot­tles, car­ried the same or­ange let­ter­ing and con­tained prod­uct con­tents of the same colour. The court found that the con­duct of Sally Beauty Prod­ucts amounted to trade­mark and trade dress in­fringe­ment and puni­tive dam­ages in the amount of $7.3m and ac­tual dam­ages in the amount of $840,000 were awarded to Mixed Chicks.

The get-up of a prod­uct gen­er­ally de­notes the form in which the brand

A trade­mark reg­is­tra­tion for the get-up of a prod­uct, in the form of a nude la­bel, places a brand owner in the best pos­si­ble po­si­tion in the event of lit­i­ga­tion pro­ceed­ings

owner pre­sents its prod­uct to the mar­ket and typ­i­cally in­cludes the la­belling and pack­ag­ing of a prod­uct. This con­sists of a num­ber of fea­tures such as colour com­bi­na­tions, ar­range­ments, graph­ics and other de­sign el­e­ments. In other words, the get-up of a prod­uct is the whole “dress” in which the goods are of­fered to the pub­lic. For ex­am­ple, the decor of the Coca-Cola line of prod­ucts, namely the dis­tinc­tive form of the words Coca-Cola, the Coca-cola logo, and the colour red as used in com- bi­na­tion with the colour white will con­sti­tute the get-up of the Coca-Cola soft drink prod­uct.

The def­i­ni­tion of a mark and a trade­mark is wide enough to in­clude the get-up of a prod­uct. Brand own­ers would typ­i­cally ap­ply to reg­is­ter their get-up in the form of a nude la­bel. A nude la­bel gen­er­ally con­sists of the pack­ag­ing of a prod­uct where the trade­marks, lo­gos or slo­gans have been re­moved and re­placed with blank spa­ces. It must be borne in mind that, in or­der to be reg­is­tra­ble, a nude la­bel must com­ply with the cri­te­ria as pro­vided for in sec­tion 9 of the act.

Ac­cord­ing to ex­ist­ing au­thor­i­ties in SA, in or­der to en­force the trade­mark rights in the get-up of a prod­uct, it will prob­a­bly be nec­es­sary for a brand owner to show that con­sumers as­so­ciate the get-up of a prod­uct with the brand owner as a re­sult of the brand owner’s ex­ten­sive use of that get-up. From an en­force­ment point of view it is, there­fore, ad­vis­able for brand own­ers to con­sider reg­is­ter­ing the get-up of their prod­ucts if the get-up is truly in­her­ently dis­tinc­tive or has ac­quired dis­tinc­tive-

, Na­tional Brands suc­cess­fully in­sti­tuted trade­mark in­fringe­ment and pass­ing-off pro­ceed­ings against GM Pa­tel Foods based not only on its reg­is­tra­tion for the get-up of the Ten­nis bis­cuit prod­uct but also based on its ex­ten­sive use of the get-up of the prod­uct, which dated back to 1911.

Even though it is pos­si­ble for brand own­ers to pro­tect and en­force its rights in and to the get-up of its prod­ucts through other forms of in­tel­lec­tual property pro­tec­tion such as copy­right, un­law­ful com­pe­ti­tion, pass­ing-off and pro­ceed­ings be­fore the Ad­ver­tis­ing Stan­dards Author­ity of SA, a trade­mark reg­is­tra­tion for the get-up of a prod­uct, in the form of a nude la­bel, places a brand owner in the best pos­si­ble po­si­tion in the event of lit­i­ga­tion pro­ceed­ings.

Not only does a reg­is­tered trade­mark pro­vide a pre­sump­tion of the va­lid­ity of a reg­is­tra­tion and a pre­sump­tion that the in­fringer had no­tice of the brand owner’s rights, but it also gives way to the prob­lem of­ten en­coun­tered in, for ex­am­ple, pass­ing-off pro­ceed­ings where ex­ist­ing au­thor­i­ties have found that, even if the get-up of the re­spec­tive prod­ucts are sim­i­lar, the dif­fer­ent names of prod­ucts are suf­fi­cient to dis­tin­guish the prod­ucts and, in ef­fect, ex­clude the like­li­hood of con­fu­sion amongst con­sumers.

On the other hand, if trade­mark in­fringe­ment pro­ceed­ings are in­sti­tuted based on a trade­mark reg­is­tra­tion for the get-up of a prod­uct, the names of the re­spec­tive prod­ucts should the­o­ret­i­cally not fea­ture and should, in ef­fect, be ex­cluded from con­sid­er­a­tion as be­ing ex­tra­ne­ous mat­ter. In essence, in or­der to de­ter­mine if con­sumer con­fu­sion is likely, con­sid­er­a­tion should only be had to the trade­mark reg­is­tra­tion for the get-up and the get-up of the in­fringer’s prod­uct. The owner of a nude la­bel could, there­fore, po­ten­tially pre­vent third par­ties from us­ing a getup sim­i­lar to the reg­is­tra­tion for the get-up, even if the names of the re­spec­tive prod­ucts are dif­fer­ent.

There are nu­mer­ous ben­e­fits as­so­ci­ated with pro­tect­ing the get-up of a prod­uct and re­cent de­vel­op­ments abroad high­light the po­ten­tial value for brand own­ers to in­vest in the get-up of their prod­ucts. It is ad­vis­able for brand own­ers, if and when ap­pro­pri­ate, to take steps to en­sure that the get-up of their prod­ucts is pro­tected.

Pic­ture: THINKSTOCK

DIS­TINCTLY REG­IS­TRA­BLE It is ad­vis­able for brand own­ers to con­sider reg­is­ter­ing the get-up of their prod­ucts if the get-up is truly in­her­ently dis­tinc­tive or has ac­quired dis­tinc­tive­ness

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