Exploring alternative remedies to trade mark dilution

Abstract

Section 34(1)(c) of the Trade Marks Act 194 of 1993 (“the remedy”) seeks to protect the advertising value of well-known trade marks against dilution. However, proprietors of well-known trade marks encounter difficulties in enforcing the remedy. The explanation for this is that in order to prove injury or harm, the courts insist on evidence ‘establishing a likelihood of substantial economic detriment’ or ‘a likelihood of substantial detriment to the distinct character or repute of the trade mark which amounts to unfairness’ without offering guidance on the nature of evidence required to satisfy this requirement. This study identifies alternative remedies for dilution by the assessing the objective of the remedy against the function of trade marks to establish whether they are aligned. Moreover, the application of trade mark dilution in South Africa is examined against its application with the European Union in order to identify the similarities and differences of application and lessons to be learnt therefrom. Following the review of literature, statute and case law, the findings are as follows: the objective of the remedy is irreconcilable with the function of a trade mark; the standard to prove injury or harm in South Africa is higher than within the European Union; and lastly, alternative remedies for dilution are found under the advertising code of conduct, unlawful competition, personality law and the Companies Act 71 of 2008.