The role of reputation in trade mark infringement
CITATION: Karjiker, S. 2018. The role of reputation in trade mark infringement. Journal of South African Law / Tydskrif vir die Suid-Afrikaanse Reg, 2018(4):726-738.
The original publication is available at https://journals.co.za
The recent decision of the supreme court of appeal in PepsiCo v Atlantic Industries illustrates our courts’ failure to properly engage with the issue of the reputation of a trade mark in the assessment of whether there has been trade mark infringement, and to provide guidance in respect of the effect it may possibly have in assessing whether there is a likelihood of deception or confusion.1 There appears to be a lopsided approach to the issue of the reputation of a trade mark between the application of sections 34(1)(a) and (b), on the one hand, and, section 34(1)(c), on the other hand, of the Trade Marks Act (the act).2 As will be illustrated in this article, while the reputation of a trade mark is central to a trade mark infringement claim pursuant to section 34(1)(c), the possible effect of a trade mark’s reputation for an infringement claim pursuant to sections 34(1)(a) or (b) is less than clear. This article identifies a possible reason for the unsatisfactory manner in which the reputation of a trade mark features in South African trade mark infringement claims – more particularly, in relation to sections 34(1)(a) and (b) – and seeks to provide an appropriate area in which the reputation of a trade mark may have a role in the assessment of trade mark infringement claims.