Many rights holders hesitate before enforcing intellectual property rights. Concerns about cost, commercial relationships, or reputational impact often lead to delay. While caution is understandable, prolonged inaction can materially weaken a rights holder’s legal position. South African courts have consistently emphasised that intellectual property rights must be asserted with reasonable diligence.
One of the first difficulties created by delay is evidentiary. Over time, records are lost, witnesses become unavailable, and memories fade. This directly affects a rights holder’s ability to prove infringement, confusion, or prejudice. Courts expect trademark proprietors to police their marks actively, particularly where the infringement is ongoing and visible.
Delay can also create an impression of tolerance. Where a rights holder is aware of infringing conduct but takes no steps to restrain it, a court may infer that the conduct was accepted. This does not extinguish statutory rights under the Trade Marks Act 194 of 1993, but it may significantly limit the remedies available, especially discretionary relief such as interdicts.
This principle was clearly articulated by the Supreme Court of Appeal in Turbek Trading CC v A & D Spitz Ltd 2009 (4) SA 104 (SCA). In this matter, the court held that a trademark proprietor who delays enforcement while being aware of infringing use, may find it difficult to justify urgent or extensive relief later. The court confirmed that delay is a relevant factor when assessing whether an interdict should be granted and whether the balance of convenience favours the applicant.
In trademark matters, delayed enforcement often allows the alleged infringer to build its own goodwill. As time passes, consumers may come to associate the infringing mark with the infringer rather than the original proprietor. This entrenches confusion in the marketplace and complicates the factual enquiry required under section 34(1)(a) of the Trade Marks Act, which focuses on the likelihood of deception or confusion.
Urgent relief is particularly affected by delay. South African courts assess urgency objectively and are reluctant to grant urgent interdicts where the applicant has known of the infringement for months or years. Self-created urgency is generally rejected. This approach has been applied consistently in urgent applications, including trademark and unlawful competition matters where applicants have delayed without adequate explanation.
From a commercial perspective, silence often emboldens infringers. A lack of response may be interpreted as indifference or an absence of enforceable rights. Early, measured enforcement, such as a carefully framed letter of demand, frequently resolves disputes before positions harden and costs escalate.
Importantly, enforcement does not always require litigation. Cease-and-desist correspondence, without prejudice discussions, and negotiated undertakings are often effective when pursued promptly. These tools lose effectiveness once an infringer has invested heavily in branding, marketing, and market presence.
Active monitoring is therefore essential. Trademark proprietors should monitor trademark registers, online marketplaces, domain registrations, and competitor activity. Early detection allows for proportionate and strategic responses, rather than reactive litigation.
That said, enforcement should be consistent and rational. Not every infringement warrants action, but selective enforcement without a defensible rationale can undermine credibility and weaken future claims. Courts are alert to inconsistent conduct by rights holders.
Intellectual property protection requires more than registration. While registration under the Trade Marks Act creates strong statutory rights, those rights must be exercised to retain their practical value. As confirmed in Turbek Trading CC v A & D Spitz Ltd, delay is not merely a procedural inconvenience; it is a substantive factor that can shape the outcome of enforcement proceedings.
By Viteshen Naidoo | Associate
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