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Legislative Texts
SOUTH AFRICA
(3) Where a trade mark registered in terms of this Act has been infringed, the court may grant the
proprietor the following relief, namely –
(a)
an interdict;
(b)
an order for removal of the infringing mark from all material and, where the infringing
mark is inseparable or incapable of being removed from the material, an order that all
such material be delivered up to the proprietor;
(c)
damages, including those arising from acts performed after advertisement of the
acceptance of an application for registration which, if performed after registration, would
amount to infringement of the rights acquired by registration;
(d)
in lieu of damages, a reasonable royalty which would have been payable by a licensee for
the use of the trade mark concerned, including any use which took place after
advertisement of the acceptance of an application for registration and which, if taking
place after registration, would amount to infringement of the rights acquired by
registration.
(4) For the purposes of determining the amount of any damages or reasonable royalty to be awarded
under this section, the court may direct an enquiry to be held and may prescribe such procedures for
conducting such enquiry as it may deem fit.
(5) Before a person institutes proceedings in terms of this section he shall give notice in writing of his
intention to do so to every user concerned whose name is recorded in the register, and any such registered
user shall be entitled to intervene in such proceedings and to recover any damages he may have suffered as a
result of the infringement.
35. Protection of well–known marks under Paris Convention
(1) References in this Act to a trade mark which is entitled to protection under the Paris Convention as
a well–known trade mark, are to a mark which is well known in the Republic as being the mark of –
(a)
a person who is a national of a convention country; or
(b)
a person who is domiciled in, or has a real and effective industrial or commercial
establishment in, a convention country,
whether or not such person carries on business, or has any goodwill, in the Republic.
(2) A reference in this Act to the proprietor of such a mark shall be construed accordingly.
(3) The proprietor of a trade mark which is entitled to protection under the Paris Convention as a well–
known trade mark is entitled to restrain the use in the Republic of a trade mark which constitutes, or the
essential part of which constitutes, a reproduction, imitation or translation of the well–known trade mark in
relation to goods or services which are identical or similar to the goods or services in respect of which the
trade mark is well known and where the use is likely to cause deception or confusion.
36. Saving of vested rights
(1) Nothing in this Act shall allow the proprietor of a registered trade mark to interfere with or restrain
the use by any person of a trade mark identical with or nearly resembling it in respect of goods or services in
relation to which that person or a predecessor in title of his has made continuous and bona fide use of that
trade mark from a date anterior –
(a)
to the use of the first–mentioned trade mark in relation to those goods or services by the
proprietor or a predecessor in title of his; or
(b)
to the registration of the first–mentioned trade mark in respect of those goods or services
in the name of the proprietor or a predecessor in title of his,
whichever is the earlier, or to object (on such use being proved) to the trade mark of that person being
registered in respect of those goods or services under section 14.
(2) Nothing in this Act shall allow the proprietor of a trade mark entitled to protection of such trade
mark under the Paris Convention as a well–known trade mark, to interfere with or restrain the use by any
person of a trade mark which constitutes, or the essential parts of which constitute, a reproduction, imitation
or translation of the well–known trade mark in relation to goods or services in respect of which that person or
a predecessor in title of his has made continuous and bona fide use of the trade mark from a date anterior to
ZA009EN
Marks, Act, 22/12/1993, No. 194
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