“Well-known” as in well-known trade marks : the scope of well-known marks protection in South Africa and other jurisdictions

Abstract

The dissertation compares the extent of protection granted to well-known trade marks in South Africa with the legal frameworks of the European Union and the United States of America. Well-known trade marks hold significant value in the global marketplace, making their protection critical for safeguarding brand identity, consumer trust, and fair competition. This study addresses the lack of clear legislative definitions and criteria in South Africa, which may result in inconsistent protection for well-known marks, for example in relation to the term 'well-known' trade mark, and compares this approach with those in the European Union and the United States. The methodology employed is a comparative legal analysis, assessing statutory provisions, books, case law, articles and websites that influence trade mark protection across the three jurisdictions. The analysis reveals differences in how well-known trade marks are recognized and protected in the United States, South Africa and the European Union. While the European Union and United States have more defined criteria and consistent practices, South Africa's approach remains less clear, leading to potential legal uncertainties for trade mark owners. There is a pressing need for South Africa to refine its legal definition and criteria for well-known trade marks to align with international standards. This would enhance the predictability and effectiveness of trade mark protection in the country. The recommendations include adopting a non-exhaustive set of criteria similar to those used by the European Union and the United States, as well as considering the explicit inclusion of concepts such as dilution by blurring and tarnishment in South African law. The findings have significant implications for policymakers, legal practitioners, and trade mark owners, particularly in ensuring that South Africa's legal framework effectively protects well-known trade marks in a manner consistent with international best practices. Such reforms are essential for maintaining a more competitive and fair market environment while preventing monopolistic practices.