The nature of the right to a trade mark in South African law

Abstract

Modern trade marks perform multiple functions taken up in a functional matrix. Amongst them the distinguishing function is invariable whilst the other functions are variable. A legal-historical and comparative investigation of the law of trade marks in the United Kingdom, the European Union, the U.S.A. and South Africa reveals that only certain trade mark functions have traditionally been afforded protection under law. This is mainly because of a historical resistance to accepting trade marks as property in the Anglo and American trade mark systems and the primacy of origin theory in the European Community trade mark system. The bedrock of South African trade mark law has been the trade mark law of the United Kingdom. The restrictions brought about by common law property theory have been carried over into the South African law of trade marks. The South African law of property is however derived from the civil law and not the common law. The historical break in continuity of the common law trade mark tradition as a consequence of the interposition of the European Union and the reception of EC trade mark law in the United Kingdom affords the opportunity for a theory of trade mark rights to be established in South Africa which is derived from concepts already present in South African law. The thesis proposes that the legal right to the trade mark in South African law is an independent subjective right of the kind proposed by Joubert. The legal object of this right is the trade mark. The entitlements of use of the holder of the right are the functions which the holder is entitled to have the trade mark perform. A range of values in which the property in a trade mark is to be found are associated with the functions. Unlawful impingement upon any function infringes the trade mark right. This theory provides the Trade Marks Act, 1993 with a needed theoretical base.