Abstract
LL.M. (Commercial Law)
Trademarks function as source identifiers and serve to distinguish the goods or services of one undertaking from that of another. As a corollary, the primary requirement for a mark to be registrable as a trademark under the Trade Marks Act 194 of 1993 is that such mark must be capable of distinguishing the goods and services of one trader from those of other traders. Couched in this requirement is not only the aim of protecting the legal interest of the trademark proprietor in his registered trademark, but also the secondary object of enabling consumers to distinguish between the similar goods and services of competing traders. The latter object has been interpreted to include, as an aim of trademark protection, the protection of consumers from deception or confusion as to the origin of the goods or services they purchase.
Section 10(12) of the Trade Marks Act, in the part of focus, prohibits the registration of marks considered by the Registrar of Trademarks to be contra bonos mores or to be likely to offend any given class of persons. The Trade Marks Act provides no guidance on how the determination as to whether a mark is moral or immoral, offensive or inoffensive, is to be made and this has lead to inconsistent outcomes to applications considered by examining attorneys and Registrars alike. The intention of the legislature in enacting this provision is an item conjecture but it is widely accepted by academics that the legislature sought to protect consumers’ sensibilities by prohibiting the registration of marks that could possibly cause discomfort, emotional distress, embarrassment, offence and (or) shock to the public. Whilst provisions similar to that found in section 10(12) can be found in the trademark laws of many states, their application is arbitrary, illogical and ineffective – for it is trite in trademark law that a mark denied registration may still be used by its owner in commerce. The end result is that refusal to register a mark does not restrain its exposure to the public, and it is estimated that such refusal could lead to a proliferation of such marks in the marketplace as no statutory protection exists against the unauthorised adoption and use of such a mark by competing traders.
This study finds that section 10(12), in prohibiting the registration of marks that are deemed contra bonos mores or offensive, is unconstitutional as it serves to favour selected forms of expression over others. This is an unjustified limitation on the right to freedom of expression, which as confirmed by the Constitutional Court in Laugh It Off Promotions CC v SAB...