The outbreak of the COVID-19 pandemic has devastated multiple industries and caused a rapid disruption of global supply chains. In an effort to curb the spread of the virus,
Many businesses across various industries are currently unable to operate and, in some cases, maintain use of their trade marks. Unfortunately, there is currently no way of knowing how long these businesses will be restricted from trading and, in so doing, make use of their brands, as there is no knowledge of when the outbreak will abate. This pandemic therefore raises the question of whether the trade marks of the impacted enterprises will, in due course, face the risk of cancellation based on non-use, or if the COVID-19 pandemic would constitute a valid defence to a non-use action.
The "use it or lose it" rule is a long-standing principle of trade mark law which requires trade mark owners to make continuous use of their trade marks in order to retain their trade mark rights. In
Footnotes
The defence of special circumstances in the trade was raised in the famous
This defence was also considered in the case of Ronald Leslie Fivelman v
"The circumstances must not be peculiar to an individual trader but must be circumstances in the trade. ... Reliance on special circumstances would also have to be coupled with the residual intention to continue trading in
With the above principles in mind, it appears likely that the non-use of a trade mark due to restrictions brought about by the COVID-19 pandemic could constitute a defence to a non-use cancellation action. However, the trade mark owner would have to provide evidence that they were unable to use their mark due to legal restrictions impacting the sale of goods or offer of services in relation to which their mark has been registered. Furthermore, the trade mark owner would need to demonstrate their intention to resume their use of the trade mark, once the special circumstances no longer exist.
Trade mark owners who are currently restricted from trading are advised to take a considered approach in preserving their trade marks, in order to mitigate against the risk of a cancellation action. Possible ways of doing this include maintaining an online presence and/or a website on which the trade mark is used, and clearly communicating their intent to resume trading activities when the lockdown is lifted.
1
2 Ronald Leslie Fivelman v
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.
Ms Sisipho Ngoma
Adams & Adams
0081
Tel: 12432 6000
Fax: 12432 6599
E-mail: mail@adamsadams.co.za
URL: www.adamsadams.co.za
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