Passing-off and Assimilation are common occurrences in the Intellectual Property field. Accordingly, competitors should always be aware of the processes and procedures that must be followed when there is an infringement. In the same breath, competitors must be aware of their rights in order to determine whether there is an infringement in the first instance and, if they have recourse to refer the matter to Court in the second.
Passing off refers to when a competitor attempts to deceive a consumer into believing its product is that of another. In this instance, the relevant competitor will use get-up and wording that is deceptively similar to that of another enterprise in order to “pass-off” its goods or services as that of the specific enterprise.
Assimilation refers to when a competitor is not trying to look like the other product, but rather tries to piggy-back off another enterprise’s good reputation.
Identifying Passing-off and Assimilation?
Passing off occurs when a competitor uses the trademarks or similar trademarks of his opponent to create the impression that his/her performance is the same or similar to the already well-known performance of his/her opponent. Thereby deceiving and influencing consumers to accept his/her performance.
Assimilation occurs where a competitor utilizes the reputation of another in order for consumers to more readily accept his/her performance. This conduct relates to the advertisement value of a trademark and not the trademark itself. It is not based on the merit of the relevant or “guilty party’s: own performance but rather, the already well known and established advertising repute of another competitor. It can occur openly or disguised.
Requirements for Passing off
- Trademark has earned a “Reputation”;
- Likely to cause confusion/deception; and
- Ordinary/reasonable consumer.
- Likelihood of deception/ confusion (objection test is applied).
- Damage suffered.
Requirements for Assimilation
- Trademark has reputational or advertisement value;
- Infringer creates the impression their performances are of the same origin;
- There is a likelihood of confusion or deception with regard to the origin of the performances;
- Detrimental injury.
Available Legal Remedies
When a competitor is prejudiced as a result of passing-off or assimilation, they have the right to institute action based on unlawful competition using the following remedies:
- Actio Legis Aquiliae: Patrimonial Damage
Where a competitor has suffered patrimonial loss she/he may recover damages based on the Actio Legis Aquiliae from the wrongdoer. All the usual requirements for the recovery of damages based on delict must be complied with.
The Competitor can request to prevent the actual/threatened infringement.
If the interdict is granted before the infringer has commenced, little or no damage will be suffered, and no damages claimed. A competitor may obtain a pendent elite interdict and still sue for damages.
- Trademark infringement
Amongst some of the statutory remedies available to a competitor in conjunction with the ones mentioned above, is the remedy in terms of Section 34(1) Trademarks Act 194 of 1993 (the Act). In terms of Section 34(1), infringement occurs when:
- In terms of Section 34(1)(a) – In the course of trade in respect of the same goods and services in respect of which the trademark was registered of an identical mark or a mark that is so nearly resembling the registered trademark, that it is likely to deceive or confuse.
- In terms of Section 34(1)(b) – of a trademark that is identical or similar to a registered trademark in the course of trade in respect of goods and services that are so similar to the goods and services relating to the registered trademark that such use is likely to cause deception or confusion
- And in terms of section 34(1)(c) – In the course of trade in respect of any goods or services of a mark similar or identical to a registered trademark where the registered trademark is well known in the Republic and the use thereof would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered mark.
In conclusion, competitors are encouraged to clarify whether the infringement constitutes Passing-off or Assimilation to avoid confusion and furthermore, any unnecessary costs of litigation. They are also encouraged that when they do take action against the infringing party, they take proper legal advice in respect of the appropriate legal remedy for their specific set of circumstances.
Mr. Petrus Khumalo