How to be Sussex-ful in securing your trade mark

This was the situation faced by actress Meghan Markle in her latest business venture under her “AS EVER” brand. Currently, Markle’s "AS EVER" brand is experiencing backlash in the press due to its similarity to “ASEVER”, a Chinese fashion brand. Furthermore, the logo for her "AS EVER" brand caused a stir as it appeared to resemble the coat of arms of Porreres, a Spanish village, with its palm tree flanked by birds:

"AS EVER" LOGO	SPANISH COAT OF ARMS

To complicate matters further, a small New York-based clothing company named "As Ever" claimed common law rights of use to the name, with the company having to clarify on its social media account that it is not associated with Markle’s brand, adding another dimension to Markle’s legal challenges.

Prior to this, Markle’s initial branding concept, "American Riviera Orchard", also ran into trouble. The name was partially refused by the Registrar of Trade Marks due to its geographical connotation and its resemblance to a well known brand of pears by Harry & David namely, “Royal Riviera”, raising concerns of potential consumer confusion.

The abovementioned branding setbacks highlight the importance of thorough preparation when building a brand. A simple but crucial step is to first conduct a comprehensive Trade mark Availability and Registrability Search, which could have prevented some of Markle’s branding issues.

In the competitive world of branding, this essential process is key to protecting brands, avoiding unnecessary hurdles, and saving significant costs. This article explores the importance of trade mark searches, how they are conducted, and why they are indispensable for safeguarding one’s business identity.

What is a Trade Mark Availability and Registrability Search?

The branding of one’s goods or services serves as a symbol of origin, enabling customers to identify and distinguish one’s brand from competitors in the marketplace with similar goods and services.

At Eversheds Sutherland, we encourage our clients to first conduct availability and registrability searches to assess if their proposed trade mark (word or logo) is available for use and registration as a trade mark before filing a trade mark application.

These searches aim to uncover potential conflicts before significant time and resources are invested into filing trade mark applications or promoting the brand. If an identical or confusingly similar trade mark is discovered, either in the marketplace or on the trade marks register, it could either block the trade mark application from proceeding to registration or result in future legal disputes —both of which are far from ideal outcomes for a brand owner.

Our firm’s trade mark searches go beyond searching only the trade marks register, offering a more wholistic search that encompasses searches of company registers, domain name registers, and internet trade searches to identify entities that may hold common law rights of use over the proposed trade mark. South Africa is a first-to-use territory as opposed to a first-to-file territory which means that prior use of a trade mark asserts a stronger right to a trade mark applied for on the register post such prior use.

Why Do We Recommend Conducting a Trade Mark Search?

• Avoiding Registration Challenges by the Registrar of Trade Marks:  Where a trade mark is not capable of inherent registration as a trade mark under the Trade Marks Act of South Africa (because it is descriptive, generic, commonly used or otherwise non-distinctive), or where it is not capable of relative registration (because it conflicts with an existing trade mark belonging to a third party on the register), the Registrar will not allow the trade mark to proceed to registration.
• Legal Disputes: Failing to conduct a trade mark search before filing a trade mark application could result in the use of a trade mark that conflicts with an existing trade mark. The owner of the pre-existing trade mark could oppose one’s application from proceeding to registration before the Registrar of Trade Marks, or it could institute trade mark infringement, passing-off and/or unlawful competition High Court proceedings against one’s use of a confusingly similar trade mark to the existing trade mark, potentially leading to a costly legal battle and the need for a complete rebranding — scenarios every business ideally wants to avoid.
• Ensuring One’s Brand Distinctiveness: A thorough search not only identifies whether the same trade mark is in use but also reveals similar trade marks that could create confusion to the general public. Distinctiveness is vital to building a strong, recognizable, and protectable brand so it is recommended to create a brand that is worthy of distinguishing one’s goods and services in the marketplace from one’s competitors.
• Saving Time and Money: While a trade mark search may initially seem unnecessary, especially for startups, it is a valuable investment. In the long run, it could save one time and money by avoiding legal challenges being raised by the Companies and Intellectual Property Office (“CIPC”), the Trade Marks Office and third parties.

Conclusion

While South Africa has a reliable legal framework within which to protect and enforce one’s trade marks (whether registered or not), the responsibility ultimately falls on a trade mark owner to vigilantly protect its brand and monitor commercial activity in the market place to ensure that third parties are not unlawfully leveraging off one’s brand . Markle's recent trade mark challenge highlights the necessity of careful preparation, meticulous oversight and timely action. If unauthorised use or imitation of one’s brand is suspected, swift action is indispensable to preserve the integrity and strength of one’s trade mark. Failure to act against third parties who misuse or infringe one’s brand could result in the erosion of trade mark distinctiveness, potentially leading to its removal from the register. For expert advice and assistance in protecting and enforcing one’s trade mark rights, consulting a qualified IP Attorney is highly recommended.