Jumping on the Trade Mark Bandwagon

It is safe to say that by this stage almost everyone in the world knows the name “Trump” and that the US President Donald Trump’s eldest daughter’s name is Ivanka.

It was recently reported in the Trademark Lawyer Magazine that a number of Chinese companies have filed applications at the Beijing trademark office to register “IVANKA” as a trade mark.

Ivanka Trump’s popularity is said to have increased dramatically among the Chinese population following her visit to the Chinese embassy in Washington during the Chinese Lunar New Year.

The applications for the “IVANKA” trade mark have been filed in relation to products ranging from alcohol to wallpaper to sanitary pads, and many things in between, and whilst some of the goods may border on the bizarre, it can’t be worse than the Chinese company that has sought to register “TRUMP” as a brand name for toilets.

The question that arises, though, is whether there is any legal provision to prevent the Chinese, or anyone else for that matter, from jumping on the proverbial bandwagon and registering “IVANKA” as a trade mark. In principle, Chinese laws allow the use of names as trade marks and it remains to be seen whether the applications filed there will be approved by the Beijing Trademark Office.

Since trade mark and other intellectual property laws vary from country to country, what may be permissible in one jurisdiction may not be permissible in another and it would be interesting to consider what the position would be in South Africa.

The South African Trade Marks Act defines a trade mark as a mark that is used or proposed to be used by a person in relation to goods or services for the purposes of distinguishing those goods or services from the same or similar goods or services connected in the course of trade with any other person.

A mark is, in turn, defined as any sign that is capable of being represented graphically including, inter alia, a name.

Although it is permissible under South African law for a name to be used and registered as a trade mark, the name sought to be registered must meet the additional requirements for registration, the most important of which is that the name in question must be distinctive in relation to the goods or services in respect of which registration is sought. Generally, therefore, common first names would not qualify for registration as trade marks on their own or in the absence of evidence of extensive use as a result of which they have acquired an ability to distinguish.

In countries, such as South Africa, where English is a recognised official language, one can see why common “English” names such as “JOHN” or “JANE” would generally not be considered to be capable of functioning as trade marks. In the case of a name like “IVANKA”, however, which is a Hebrew name, the situation may be slightly different as Hebrew is not a commonly spoken language in South Africa and neither is “IVANKA” a common name in this country.

So it is arguable that “IVANKA” would, on the face of it, pass the test for inherent registrability in South Africa and would, therefore, qualify for registration as a trade mark.

It is also worth mentioning at this stage that section 12 of the Trade Marks Act provides that where an application is filed for a trade mark which consists of or includes the name or representation of a person, the Registrar may require the applicant to furnish him with the necessary consent. If the Registrar of Trade Marks were to recognise “IVANKA” as the name of Ivanka Trump, he may therefore require a letter of consent from Ms Trump to be provided, which could pose a stumbling block for any potential applicants in South Africa.

The next question is whether there is anything else that would prevent someone, other than Ivanka Trump herself, from registering “IVANKA” as a trade mark in South Africa and there are two stages in the registration process where this question would be relevant.

Firstly, in the absence of a prior confusingly similar trade mark on the Trade Marks Register, the relevant examiner at the South African Trade Marks Office may, on examination, refuse an application to register “IVANKA” if he or she perceives it to be the name of a famous person and there is no obvious basis for the applicant to claim proprietorship of such name.

Secondly, assuming the application is accepted by the Trade Marks Office, it must then be advertised for opposition purposes, giving interested third parties an opportunity to raise any objections to the registration of the mark. This would be the stage at which Ms Trump would be able to attempt to formally assert her rights to the trade mark “IVANKA”.

Without speculating on the prospects of success and in the absence of any other relevant facts or circumstances, in order to successfully oppose any applications to register “IVANKA” as a trade mark, it is likely that Ms Trump would rely on one (or all) of three provisions of the Trade Marks Act, and in either instance, the burden of proof would be substantial.

Firstly, section 10(3) of the Trade Marks Act prohibits registration of a mark in relation to which the applicant for registration has no bona fide claim to proprietorship.

Secondly, section 10(7) prohibits registration of a mark, the application for registration of which was made mala fide.

Lastly, section 10(6) prohibits registration of a mark which, at the date of application for registration, constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of a trade mark which  is entitled to protection under the Paris Convention as a well-known trade mark and which is used for goods or services identical or similar to the goods or services in respect of which the trade mark is well-known and where such use is likely to cause deception or confusion.

Similar considerations would apply to the first two grounds of opposition. In the case of section 10(3) it is a well-established principle in South African law that an applicant can claim to be the bona fide proprietor of a trade mark if he has originated, acquired or adopted it and has either used it to the extent that it has gained a reputation indicating that the goods (or services) in relation to which it is used are his, or if he proposes to use it in relation to such goods (or services).

A number of principles applicable to an assessment of whether a claim to proprietorship is bona fide have been developed by South African case law. One such principle is that a person cannot claim to be the proprietor of a mark where he is aware that another person has a better claim to ownership.

Nonetheless, it must also be borne in mind that since trade marks are territorial in nature, the fact that a trade mark is registered or used in a foreign country does not, in itself, constitute a bar to its adoption and registration by another person in South Africa. This could well prove to be a stumbling block for Ms Trump.

Section 10(7) is not one that has frequently been considered by South African courts, which is due to the fact that the assessment of whether an application has been made mala fide is a very subjective inquiry and comes down to the motive or intention with which an application is made. It is generally understood, though, that it is not permissible to compete maliciously or dishonestly and it has been submitted by leading South African trade mark experts that an application is made mala fide where the actions of the applicant would be regarded as contra bonos mores in the particular trade or industry concerned.

Once again, the fact that another party has adopted and used the trade mark in question in a foreign country is not generally an indication that an application for the identical or confusingly similar trade mark in South Africa is made mala fide.

Practically, these considerations mean that there is, on the face of it, nothing to prevent a third party from adopting, using and registering “IVANKA” as a trade mark in South Africa, even though Ms Trump herself is using and has registered the name elsewhere in the world.

As the wording suggests, section 10(6) provides protection for trade marks that qualify as well-known trade marks under the Paris Convention. In order to successfully oppose an application on this basis the opposing party would have to prove that its trade mark is well-known in South Africa. In this regard, the existence of a foreign reputation is not sufficient and it must be proven that the reputation extends to South Africa. In this regard, it is not necessary to show actual use of the well-known trade mark in South Africa, and the courts have held that evidence of exposure of a trade mark in South Africa as a result of spill-over advertising in television and print media can suffice, as can evidence that South Africans travelling abroad have come into contact with the trade mark in question. It must be noted though, that the trade mark in question must be well-known to a substantial number of persons interested in, or likely consumers of, the goods or services to which the trade mark relates.

Having briefly discussed the basic principles of South African law that could apply in circumstances similar to those in which Ms Trump finds herself in China, it is clear that the burden of proof on a party seeking to oppose a trade mark on any of the above grounds is substantial, and in the case of Ivanka Trump’s situation, much could hinge on whether a sufficient number of consumers in South Africa would regard “IVANKA” as being well-known in this country. Proving this could well be a tall order…