Copycat products imported into SA often replicate well-known brands. In such cases, questions arise over whether the owner of the legitimate well-known brand can sue based on SA's counterfeit laws, trademark infringement, a type of unlawful competition known as passing off, or copyright infringement.

In an analysis on the International Law Office website, Karen Kitchen, from KISCH IP, says in order for the owner of a well-known trademark to sue based on pure trademark infringement in SA, it must have secured a registered trademark in this country.

Statutory trademark protection is typically sought in a given jurisdiction to protect a primary word mark, as well as label marks that contain the primary word mark.

Kitchen adds that from an enforcement perspective, the difficulty comes when a third-party infringer manufactures a copycat product which has an entirely or markedly different word mark to that which is registered or is incorporated in a label mark that is registered, but adopts a confusingly similar get-up and packaging style to that used by the owner of a well-known brand and trademark.

In this regard, filing a part mark can help to avoid ambiguity.

Sections 18(1) and (2) of the Trademarks Act states:

‘Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and any such part as separate trade marks. Each such separate trade mark must satisfy all the requirements for registration of a trade mark under the Act and shall for all purposes be a registered trade mark.’

Says Kitchen: ‘Owners of well-known marks or marks that may become well known can assert registered rights in part marks no matter what word mark is imposed thereon. Whether part marks can assist in anti-counterfeiting strategies has yet to be tested in SA, as entirely different word marks imposed thereon could dilute the possibility that the copycat product is a colourable imitation. However, filing part marks can certainly assist with trademark infringement and enforcement.’

Full analysis on the International Law Office website