Traditionally, the rationale behind apposing brand names on goods is to help customers distinguish between similar products and ensure that manufacturers produce work of consistent quality. While still true, in our contemporary society, brand names have acquired a purpose beyond consumer protection. Brand names are now viewed by manufacturers as business assets, helping in the sale and marketing of their goods.1 Huge investments are made in designing, launching and promoting brand names.
Trade marks are an important part of a brand strategy. As a unique identifier, a trade mark helps prevent competitors from stealing the brand image or creating similar identities likely to cause confusion. Monetary value is assigned to trade marks, going up to staggering amounts, and a significant zeal is often shown in protecting trade marks from infringers and counterfeiters. This is particularly true for well-known trade marks, which are heavily marketed, widely recognised and often victims of counterfeiting.
Defining 'well-known trade marks' or, as they are sometimes called 'famous trade marks' is a difficult endeavour. No definition of well-known trade marks has been universally adopted and the fluidity inherent in the term has been accepted. Frederick Mostert, a leading - well-known! - expert on the subject, stated that 'the recognition and protection of well-known trade marks differ from country to country: the definitions and criteria in this area of trade mark law remain elusive'.2 Suffice to say that a well-known trade mark is one that has a certain degree of market recognition and which is distinctive3, or, as David Tatham observed, 'we do not know; but we know when we see it'.4
Be it locally produced or imported, the Mauritian public is fond of well-known trade marks. A combination of high economic growth, a rise in the shopping culture and the greater availability of retail space has all contributed to a strengthening of the potential for retailing in Mauritius. The owners of well-known brands, capitalising on Mauritians' desire for higher quality goods and services as well as their growing brand awareness acquired while travelling and through advertising, have shown significant interest in being part of the Mauritian retail market. The increasing commercial opportunities in Mauritius have attracted the attention not only of legitimate businesses, but also of counterfeiters and unscrupulous traders desirous to take advantage of these new opportunities. The need to protect well-known trade marks from counterfeiters and copycats is genuine whether for the right holder, producer, importer, exporter or exclusive licensee,. Understanding the laws in place is the first step in the right direction.
International protection of well-known marks
The first inclusion of the protection of well-known marks in an international instrument occurred in 1925 in the Paris Convention for the Protection of Industrial Property (Paris Convention). Article 6bis protects both registered and unregistered well-known trade marks, so long as the trade mark is recognised as well-known in the country where protection is sought. Well-known service marks are however not protected under this provision. Under article 6bis, a trade mark which is identical or similar to a well-known mark and which is liable to cause confusion in that it constitutes a reproduction, an imitation, or a translation, shall have its registration cancelled or its use by the third party prohibited. The same protection is afforded to similar marks that derive their essential parts from a well-known trade mark or that are an imitation liable to create confusion. This protection is however afforded only where the third party uses or registers an identical or similarly confusing trade mark for the same or similar goods. Right holders may request the cancellation of the identical or similar trade mark within five years of the date of registration, but no time limit is fixed when the cancellation or prohibition of use relates to marks registered or used in bad faith.
Article 6bis was later complemented by article 16(2) and (3) of the Agreement on Trade-Related Aspects of Intellectual Property Rights of 15 April 1994 (TRIPS agreement). Article 16(2) and (3) extends the scope of the protection afforded to well-known marks to services marks. The determination of a well-known mark is rendered more flexible, account being taken of the knowledge of the trade mark in the relevant sector of the public, including knowledge acquired in the country through trade mark promotion. Finally, article 16(2) and (3) of the TRIPS agreement extend the protection provided under article 6bis to goods or services which are not similar, where the use of the trade mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trade mark and where the interests of the owner of the registered trade mark are likely to be damaged by such use. Through the TRIPS agreement, all members of the World Trade Organisation, including Mauritius, are obligated to protect well-known trade marks in their country.
And in Mauritius?
Patents, Industrial Designs and Trademarks Act
In Mauritius, well-known trade marks are protected under The Patents, Industrial Designs and Trademarks Act (PIDTA). The PIDTA provides that a trade mark which "is identical with, or confusingly similar to, or constitutes a translation of, a mark or trade name which is well-known in Mauritius for identical or similar goods or services of another enterprise", cannot be registered.5
The PIDTA further provides that no trade mark shall be registered in Mauritius for goods or services which while not identical or similar to those of the well-known mark would indicate a connection between those goods or services and the owner of the well-known mark and where the interests of the owner of the well-known mark are likely to be damaged by such use.6 Under the PIDTA, the obligation is on the Controller of the Industrial Property Office to refuse registration of well-known marks, even where there is no objection filed by the rightful owner. In practice, this prerogative is not always exercised by the Controller requiring right holders to exercise constant caution.
Even where not registered in Mauritius, the owner of a well-known trade mark shall have the right to institute court proceedings against any third party who uses his mark without authorisation or who performs any act making infringement likely.7 While an unregistered trade mark is afforded protection under the law, it is highly recommended that right holders do register their trade marks. A registered trade mark is a strong deterrent against unauthorised third party use. It provides a presumption of validity of the registration and the rights conferred, which are strong arguments against potential infringers before the courts. The suspension of counterfeit goods both at the border and inland by Customs is furthermore only possible for the owners of registered trade marks.
The value of registered well-known trade marks as a deterrent and in the pursuit of infringers is heightened by the absence of a register of well-known trade marks in Mauritius. The determination as to whether a trade mark is a well-known mark is for the domestic courts and the burden of proving that a trade mark is well-known will fall upon the right holder. The Supreme Court in denying well-known status to a trade mark highlighted that evidence must be adduced to show that the mark in question has been in the market over an extensive number of years, that it has widespread recognition, is registered in several countries and is widely known in the relevant sector of the public, that it is used over a wide geographical area in several countries or that it has been widely promoted by advertising, publicity presentation at fairs or exhibitions. It can further be shown that great value or prestige is associated with the mark.8
Unfair Practices Act
The Unfair Practices Act also makes provision for the protection of well-known trade marks not registered in Mauritius as provided in the Paris Convention.9 An act or practice which, in the course of an industrial or commercial activity, causes or is likely to cause, confusion with respect to the trade mark of an enterprise, whether registered or not, is an unfair practice.10 An act or practice which, in the course of an industrial or commercial activity, damages or is likely to damage, the goodwill or reputation of another's enterprise as attached to its trade mark, shall constitute an unfair practice, regardless of whether such act or practice causes confusion.11 An act or practice which, in the course of an industrial or commercial activity, misleads or is likely to mislead the public shall constitute an unfair practice.12 In Mauritius, most cases alleging a misappropriation of a well-known brand are prosecuted under the Unfair Practices Act. This was the case in Polo/Lauren Company Limited Partnership v Regent Ltd where the Judge restricted the commercial use of the POLO mark and its various iterations by unauthorised manufacturers and sellers based on the provisions of the Unfair Practices Act.13 In the case of SOFAP Ltd v MAUVILAC Co Ltd, referring to the Unfair Practices Act, the judge granted an interlocutory injunction restraining and prohibiting the respondent from marketing and selling cement-based adhesive (MAUVIFIX) due to the strong similarity with the known product sold by the applicant (PERMOFIX).14
There are plans to repeal the PIDTA by the adoption of the Industrial Property Bill, which must be presented before parliament for debate and adoption. Under the Industrial Property Bill, it will no longer be permitted in Mauritius to register a sign which conflicts with a prior third party right, including where the sign reproduces, imitates or translates a mark which is well-known in Mauritius in respect of similar goods or services where it is likely to cause confusion.15 Unregistered well-known trade names will be further protected under the umbrella provision of section 104(2) which provides that trade names shall be protected even prior to or without registration against any unlawful third party act.
Under the Industrial Property Bill, well-known trade marks are thus protected against identical or confusingly similar third party trade marks for the same types of goods and services. The Industrial Property Bill however leaves well-known trade marks unprotected from the use of their well-known trade mark for dissimilar goods and services, thereby falling short of Mauritius' obligations under the TRIPS agreement. However, assuming that the Unfair Practice Act will still be in force, the protection of well-known trade marks will not be undermined by this weakness of the new Bill.
The purchasing decision of many customers is influenced by the brand name on the product. A well known trade mark is even more convincing: customers want the familiarity, the value and the image reflected by well-known brands. Protecting your well-known trade mark from counterfeiters is essential to ensure the purchasing experience of the consumer remains positive.
1 R Kelbrick, 'The term 'well-known' in South African trade-mark legislation: some comparative interpretations' (2015) 38 CILSSA 435, 435.
2 F Mostert cited at H Onishi, Well-Known Trade Marks: A Comparative Study of Japan and the EU (Routledge 4 2015) 6.
3 ibid 1.
4 ibid 7.
5 PIDTA, s 36(2)(e).
6 PIDTA, s 36(2)(f).
7 PIDTA, s 40(2) & (4).
8 Deceuninck NV v Zendow Comfort Co. Ltd & Anor (2011) SCJ 51.
9 Polo/Lauren Company Limited Partnership v Regent Ltd (2004) SCJ 45.
10 Unfair Practices Act, s 5(2)(a).
11 Unfair Practices Act, s 6(2)(a).
12 Unfair Practices Act, s 7(1).
13 Polo/Lauren Company Limited Partnership v Regent Ltd (2004) SCJ 45.
14 SOFAP Ltd v MAUVILAC Co Ltd (2010) SCJ 143
15 Industrial Property Bill , s 91(3)(a).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.