- Trade mark registration in South Africa does not automatically protect a brand internationally. Trade mark rights are territorial and generally require registration in each target country.
- South Africa’s Trade Marks Act 194 of 1993 protects qualifying well-known international trade marks, even if they are not registered locally.
- In the McDonald’s Corporation v Joburgers case, the Supreme Court of Appeal recognised McDonald’s trade marks as well-known in South Africa before the company began trading locally.
- Foreign brands may be eligible for registration in South Africa if no conflicting local rights exist, including rights attached to unregistered or well-known trade marks.
- Businesses should conduct trade mark searches and secure registration in every market where they intend to operate. South African registrations are also vulnerable to cancellation after five consecutive years of non-use. *
Are you a business owner who has registered a trade mark in South Africa and assumed that it would protect your brand worldwide? If someone in another country uses the brand you’ve spent years building, do you have any legal recourse?
This is precisely the situation faced by Plato Coffee, one of South Africa’s fastest-growing coffee brands. The company’s director, Stephan Bredell, became aware of two coffee shops; one in Tehran, Iran, and the other in Iskandar Puteri, Malaysia; that had allegedly copied Plato Coffee’s logo. As Bredell put it, this was “not just ‘inspired by’ or similar vibes – it was full-on Ctrl+C, Ctrl+V energy”.
The converse is also true. Have you ever seen a brand overseas and wondered whether you could register that same name or logo in South Africa? The answer might surprise you. Trade mark rights are, by their very nature, territorial.
This means that, except in some circumstances, a trade mark registered in one country does not automatically enjoy protection in another.
There is no single trade mark registration that covers the entire world. If a foreign brand owner has not secured its trade mark in South Africa, the door may be open for you to register it locally, provided certain conditions are met.
What does ‘territorial’ actually mean?
Trade mark rights are generally limited to the country where protection is established. For registered trade marks, this usually means the country where the mark is registered. For unregistered trade marks, rights may arise through use, depending on the country’s laws.
For example, a trade mark registered in the United States or any other country does not automatically enjoy registered protection in South Africa. Each country operates its own trade mark register, governed by its own legislation.
This principle extends beyond trade marks to other forms of intellectual property, including patents and registered designs. The Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) recognise this territorial approach.
Although these treaties establish frameworks for cooperation between countries, they do not create a single, universal trade mark right. Businesses must still seek registration in each country where they want registered protection.
There are, however, regional systems that offer a different approach. For example, the European Union trade mark system allows businesses to protect a mark across multiple countries through a single registration.
The well-known trade marks exception
Although most trade marks are protected on a country-by-country basis, South African law provides protection for ‘well-known’ marks, even if they are not registered in South Africa.
Under section 35(3) of the Trade Marks Act 194 of 1993, the proprietor of a well-known trade mark may restrain the unauthorised use in South Africa of a mark that reproduces, imitates or translates that well-known mark in relation to identical or similar goods or services, where the use is likely to cause deception or confusion. This gives effect to Article 6bis of the Paris Convention.
For businesses, a well-known trade mark is not simply one that enjoys international fame. To qualify for protection in South Africa, it must be sufficiently recognised among the relevant sector of the South African public, even if it is not registered locally.
In determining whether a mark is well-known, section 35 requires consideration of the public’s knowledge of the mark in the relevant sector, including knowledge gained through its promotion. In practical terms, the focus is on whether the mark is recognised by the people relevant to the goods or services in question, rather than whether it is familiar to the general public.
For traditional Paris Convention protection, an unregistered mark used by another party in relation to identical or similar goods, it is sufficient for the mark to be well known within the relevant sector of the public.
Examples of trade marks that were recognised as well known in South Africa include BMW (Verimark (Pty) Ltd v BMW AG), BLACK LABEL (SAB International v Laugh It Off Promotions), AMARULA (Southern Liqueur Company Limited v Noble Spirits (Pty) Ltd) and SPIDER (Safari Surf Shop CC v Heavywater and Others). Whether or not a mark will qualify as well-known must always be determined with reference to the facts of the particular case.
A business owner can register a trade mark in South Africa before it starts trading here. A proprietor who intends to use the mark in South Africa, but does not yet trade locally, may register it defensively. The registration reserves the mark on the register, so someone else can’t register it.
Under South African law, however, a registered trade mark may be removed from the register if it has not been used for a continuous period of five years. If the proprietor does not enter the local market within that five-year period, the registration becomes vulnerable to cancellation.
An interesting South African example is the McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another case, where the meaning of ‘well-known’ was first considered. During the 1990s, the famous fast-food chain McDonald’s Corporation had not yet traded in South Africa but had obtained defensive trade mark registrations locally.
In 1992, Joburgers Drive-Inn Restaurant (Pty) Ltd began establishing fast-food outlets using the MCDONALD’S, BIG MAC and the Golden Arches device marks. Its managing director applied to register these and other McDonald’s marks while simultaneously seeking the expungement of McDonald’s existing registrations.
The Supreme Court of Appeal (SCA) held that the McDonald’s trade marks were well-known in South Africa, even though the fast-food chain did not yet have a physical presence in the country at the time.
The SCA found that the reputation of the McDonald’s brand had preceded the company into South Africa through media exposure, travel and word of mouth.
The McDonald’s case was the first appellate decision to interpret section 35 of the Trade Marks Act 194 of 1993 and led to the later insertion of section 35(1A) into the Trade Marks Act. This provision provides that in order to determine whether a trade mark is well-known in the Republic, due regard shall be given to the knowledge of the trade mark in the relevant sector of the public, including knowledge which has been obtained as a result of the promotion of the trade mark.
What should you consider before filing?
If you are considering registering a trade mark in South Africa that is already registered in another country, or if you wish to protect your trade mark in other jurisdictions, it is important to consult a trade mark professional before you file.
Whether a mark is available for registration depends on the register, legislation and practice of each country, as well as on any earlier rights that others may hold, including unregistered and well-known marks.
A trade mark attorney can carry out the necessary searches, assess the risks and advise on the best filing strategy, whether locally or abroad. A foreign registration is only one part of the picture. It is not a substitute for local advice.
The bottom line
Registering or using a trade mark overseas does not automatically protect it in South Africa. While well-known marks may benefit from protection even without local registration, businesses should not rely on this exception.
If your brand matters, register it in the markets where you intend to operate and do your due diligence before adopting a mark that is already in use elsewhere.
A foreign registration is not a free pass to use the same brand in South Africa; and businesses looking to do so should avoid approaching the local market with too much ‘Ctrl+C, Ctrl+V energy’.
* Summary written by AI
Written by Nicole van der Walt, with oversight by Carl van Rooyen (partner) at Spoor & FisherSpoor & Fisher. The practice is Africa’s largest specialised intellectual property law firm, with deep African roots and a global reach. The firm specialises in all aspects of IP law, including trade marks, copyright, patents, registered designs, anti-counterfeiting, commercial work with an IP flavour, and litigation in these fields. Spoor & Fisher is ranked in the top band in the latest editions of leading legal directories, both local and international, and has a reputation for pioneering innovations and contributions to IP law and academia. Clients have trusted the firm to protect, manage and enforce their IP across Africa and the Caribbean for over 100 years.
