The deception provisions of sections 10(12) and 10(13) of the Trade Marks Act, 194 of 1993

Abstract

This mini dissertation focuses on the provisions of section 10(12) (only regarding inherent deceptiveness) and section 10(13) (regarding deceptiveness through use) of the Trade Marks Act. It provides an interpretation of the first part of section 10(12) as well as an interpretation of section 10(13) and provides clarity and best practices.

This has been done by considering the provisions of sections 10(12) and 10(13) of the Trade Marks Act to determine what these sections entail. A desktop literary review was then conducted to find provisions of certain international legislation that were similar to the provisions of sections 10(12) and 10(13) of the South African Trade Marks Act. Sections from the legislation of the United Kingdom and the European Union were found to be relevant in this regard.

This paper shows that an inherently deceptive trade mark, in terms of section 10(12) is a trade mark that is, by its nature and without reference to the rights of other trade marks, deceptive. It has also shown that for the purposes of section 10(13), it is only the use of the trade mark itself by its proprietor that must be considered in determining whether or not a trade mark has been used in a manner that has been likely to deceive or cause confusion.

The principles and tests applicable to unlawful competition have been considered to determine the test for section 10(12). It has been found that the test for unlawful competition in this context is based on how a substantial number of consumers would perceive a product. If the public would be confused or likely to be confused to believe that the goods have an attribute which they actually do not possess as a result of the way that they have been marketed, then there is likely to be a finding of unlawful competition. This test is relevant and may also be applied to determine whether or not a trade mark is inherently deceptive for purposes of section 10(12).

It is also apparent that the test to determine whether a trade mark has been used in a manner which has caused deception or confusion in terms of section 10(13) is whether the trade mark proprietor has, through its own use alone or through use which it has permitted, used a trade mark in a manner that has rendered the message that the trade mark conveys deceptive or confusing.