Trade Marks Act 194 of 1993

Status of this file: structured per-subsection summary of the cited provisions. Direct quotations flagged inline. Verbatim text fillable from SAFLII PDF on next refresh.

s 34 — Infringement of registered trade mark

s 34 has two halves: subsection (1) lists the kinds of use that constitute infringement; subsection (2) lists permitted uses that do not constitute infringement.

s 34(1) — kinds of infringement

• 34(1)(a) — identical mark, identical or similar goods/services
• 34(1)(b) — confusingly similar mark, identical or similar goods/services
• 34(1)(c) — well-known mark; use likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the mark, regardless of confusion or deception (the anti-dilution provision)

s 34(1)(c) was the basis on which SAB sued Laugh It Off Promotions for parodying the BLACK LABEL trade mark on T-shirts. The Constitutional Court in Laugh It Off Promotions CC v SAB International [2005] ZACC 7 held that the mark proprietor must prove likely substantial economic detriment before s 34(1)(c) bites — mere offence is not enough — and that expressive use must be balanced against s 16 of the Constitution.

See Laugh-It-Off-ZACC-7-2005.md.

s 34(2) — permitted uses

A registered trade mark is not infringed by:

• 34(2)(a) — bona fide use by a person of his/her own name, the name of his/her place of business, the name of any of his/her predecessors in business, or the name of any such predecessor’s place of business
• 34(2)(b) — bona fide descriptive use of the mark to indicate the kind, quality, intended purpose, value, geographical origin, or other characteristics of the goods or services
• 34(2)(c) — bona fide use of the mark in relation to genuine goods or services for which there is no other appropriate mark to indicate use
• 34(2)(d) — statutory exhaustion: importation into or distribution, sale, or offering for sale in the Republic of goods to which the trade mark has been applied by or with the consent of the proprietor
• 34(2)(e) — bona fide use of the mark for purposes of identification of, or comparison with, the goods or services to which the mark is applied (comparative advertising, with conditions)

provided always that any such use is consistent with fair practice.

Site reliance:

• s 34(2)(d) — Clause 17 (resale prohibition). Once Takealot sells genuine goods to the consumer with the mark proprietor’s consent, statutory exhaustion applies — re-sale of the genuine unaltered goods does not infringe the mark. Carve-outs: Television Radio Centre v Sony Kabushiki Kaisha 1987 (2) SA 994 (A) (material alteration after market) and Frank & Hirsch v Roopanand Brothers 1993 (4) SA 279 (A) (separate SA copyright in packaging).

s 34(2)(c) re fair practice — non-commercial criticism / commentary

The site’s “AboutSection” cites s 34(1)(c) in the legal-grounding block as one of four bases for the use of the Takealot name. The strict reading is that s 34(1)(c) is the anti-dilution provision (a cause of action for the mark proprietor), and that the defence relied on by criticism / commentary sites is the combination of:

• s 16 of the Constitution (freedom of expression);
• the s 34(2) permitted uses (esp. (b) descriptive and (c) where no other appropriate mark exists, and the “consistent with fair practice” proviso);
• the Laugh It Off balancing test, which makes “substantial economic detriment” a hard threshold for the proprietor to meet against an expressive critic.

The site’s AboutSection currently lists “Section 34(1)(c) of the Trade Marks Act 194 of 1993 — non-commercial use for criticism/commentary.” Strictly speaking the cause of any anti-dilution argument from Takealot would be s 34(1)(c); the defence sits in s 34(2) read with s 16 of the Constitution and Laugh It Off. The current site copy is widely-used shorthand and is supported by the Laugh It Off judgment, but a more technically correct rewording would be:

“Section 34 of the Trade Marks Act 194 of 1993 read with section 16 of the Constitution — Laugh It Off establishes that anti-dilution under s 34(1)(c) requires substantial economic detriment, and non-commercial criticism / commentary is balanced against the proprietor’s interests through the s 34(2) fair-practice carve-outs and the constitutional right to expression.”

This is a soft refinement, not a fix-now item.

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Verbatim text

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