SA trade mark case is eerily familiar (sort of)

The IPKat is grateful to Professor Roshana Kelbrick of UNISA for tipping him off about a recent trade mark decision of the South African Supreme Court of Appeal. The key issues: the need for trade mark use and dilution will provoke a strange feeling of déjà vu among European readers (as in fact with the South African legislation, which is pretty similar to our own).

Also familiar is the factual background - the use of a car logo on a representation of the car, but without intention to suggest that the user is in any way responsible for the car or associated with the car maker. Here the defendant advertised car polish. In one of its adverts, a BMW car was shown being treated with the polish, the car was then set alight, but it was shown that there was no damage to the car’s paintwork. In another, an older car is shown as being treated with the polish and consequently metamorphosing into a shining BMW. In both cases, the BMW logo is clearly visible.

BMW argued identical marks/identical goods infringement (BMW holds South African registrations for car polish) and dilution. BMW failed on both counts.

Citing copiously from European and UK case law, the court required trade mark use, holding that what is needed is ‘an interpretation of the mark through the eyes of the consumers as used by the alleged infringer…[which] creates an impression of a material link between the product and the owner of the mark…use of the mark for purely descriptive purposes will not create that impression’.

Here consumers would see the logo as being part of the car, rather than being used as a trade mark. Consumers would not see it as indicating a material link between the two companies, nor would they see the logo as performing any guarantee of origin function.
[It rather amuses the IPKat that the SA court has cited most of the relevant European case law, but has come to an answer that is probably different to the position that the ECJ would take. The Kat reckons it’s a weakness in the ECJ’s jurisprudence if it is so open to interpretation].

On the dilution issue, Harms ADP said that the issue here was whether there would be unfair advantage ‘in other words, whether there is the likelihood of dilution through an unfair blurring of BMW’s logo’. However, it was said to be accepted that the defendant’s use was ‘not detrimental, nor [did] it tarnish BMW’s logo’.
[The IPKat says that there’s some serious conflating of dilution/blurring and unfair advantage going on here]

The court confirmed that trade mark use is not needed under the dilution provision, since the aim of the provision is to do more than just protect the source-denoting function. However, the way in which the mark has been used may be relevant more broadly to establishing this time of infringement.
[The IPKat wonders what the position is on this under UK law. Harms ADP cited Johnstone as authority for the fact that trade mark use is required under s.10(3) in the UK, but the IPKat suspects that this was a throwaway comment by the House of Lords]

Here, although the defendant may have been taking advantage of the BMW logo, it was not doing so in a way that was unfair. The defendant’s focus was on the properties of its own goods, and it would be unreasonable to either not use any type of car, or to avoid showing the car’s logo. The judge concluded ‘…I fail to see how the use of the logo can affect the advertising value of the logo detrimentally. A mental association does not necessarily lead either to blurring or tarnishing’.
[The IPKat is happy to see the judge paying due attention to the fairness element of unfair advantage but, again, his final comments display a confusion between dilution and unfair advantage.]