E COMMERCE LAW E COMMERCE LAW 4 E Commerce Law Name of the Student Name of the University Author note To, Google 123 Main Street, Durban, KZN

Running head: E COMMERCE LAW
E Commerce Law
Name of the Student
Name of the University
Author note

1E COMMERCE LAW
To,
Google
123 Main Street, Durban, KZN
Date: 07.05.2018
Subject: Reply to the letter of Google
Introduction
It can be introduced stating that on infringement of a registered trademark, the High
Court will have jurisdiction that grants appropriate relief to the owner. In case of trademark
infringement proceedings, the applications are civil in nature and the owner of the registered
trademark institutes the proceedings. However, no provision for administrative or criminal
proceedings to be instituted will be related to the infringement of trademark. When there is a
scenario of infringement, there are remedies that are available to the owners of the infringed
marks.
Body of Legal advice
As per the law, it can be observed that all the registered trademarks have been defined
under section 34 of the Trade Marks Act 194 of 1993. It has been stated in the sub-section
that when there is a scenario of trademark infringement, it can be prohibited by a third party
of a mark that is identical to other registered trademark goods. It can only be identical when
the registered trademark covers those similar goods. As per section34(1)(b) of the Trade
Marks Act 194 of 1993 helps in covering identical goods and the prevents the use of it by a
third party of a mark1. That registered trademark covers not all similar services or goods.
1 Wang, Jia. "South Africa: Digital Age Copyright Limitations and Exceptions for Education and
Research." Conceptualizing Copyright Exceptions in China and South Africa. Springer, Cham, 2018. 201-244.

2E COMMERCE LAW
Unregistered trademarks can be protected if the common law is applied and has been passed
off in an unlawful competition. Section 34 (1)(c) of the Trade Marks Act 194 of 1993, is a
provision of anti-dilution that helps in preventing the use by a third party of a mark that is
similar and is well-known in South Africa or across the globe. This should be proven that the
use of infringing mark is not taking any kind of unfair merit or has a distinctive character
despite any kind of confusion2. Therefore, infringement can be committed when a company
has similar or identical products, signs or logos as compared to other existing ones across the
world. In such instances, the company that already has the existing products can file a suit of
infringement against that company. The defendant party can defend himself by applying the
remedies available by the law. The defenses to trademark that can be included in the process
of infringement are to use the name in good faith, usage of genuine goods, concurrent
registration, usage of good descriptive use. The defendant can apply these defenses to
infringers. In the case of Kulula V SAA Branding, it was held that the defendant had
supported his defense based on the remedies that are available in the legislation3. According
to the case study, it was seen that Sofia’s company had printed pictures on their products of
mugs and t-shirts4. All these products of Sofia’s company were tweeted and online.
Thereafter, it was noticed that all the images and slogans used by Sofia’s company were well-
known trademarks. The trademarks that were used were known to other parts of the globe as
well and they were registered as trademarks in other countries as well. It was found that the
slogans and pictures already existed in google. However, it was stated and held that Sofia was
committing infringing upon the trademark of google and hampering their goodwill and
reputation. It can be concluded stating Sofia can defend herself by referring to the Trade
Marks Act 194 of 1993. A business letter can be sent to Google by Sofia stating the available
2 Tushnet, Rebecca. "What's the Harm of Trademark Infringement." Akron L. Rev. 49 (2016): 627.
3 Kulula V SAA Branding
4 Thondhlana, Gladman, Sheona Shackleton, and James Blignaut. "Local institutions, actors, and natural
resource governance in Kgalagadi Transfrontier Park and surrounds, South Africa." Land use policy 47 (2015):
121-129.