Mobile operator Cell C may have difficulty in registering its new logo as its trademark, which was provisionally refused by the Registrar of Trade Marks on August 2, but it may be possible for the company to claim common law rights to the logo in the future.

Cell C is within the bounds of the law, in campaigns and advertising, to continue to use its new logo, which consists of the word ‘cell’ followed by a circle containing a ‘c’ and closely resembles the copyright symbol. Cell C could possibly acquire common law rights through continuous use, with no need to register the mark in terms of the Trade Marks Act, law firm Werksmans Attorneys intellectual property director Janine Hollesen tells Polity.

“Whether these rights will be acquired will always be a question of fact, which the mobile operator will have to prove should it wish to enforce any rights which it may have.”

Common law rights are established by way of use and, in order to enforce such rights by way of a common law pasing off, the public must associate the mark with Cell C.

“Only in time will we know if Cell C could and will claim common law trade mark rights to the copyright symbol through the use of the mark. Even then, Cell C will not be able to prevent the common use of the copyright symbol by other companies indicating copyright in their material,” she says.

There has been much speculation as to why Cell C was refused registration of the logo. As the online records of the Trade Marks Register do not provide a reason, it is possible that the rejection is in line with regulation 10 of the Trade Marks Act, No 194 of 1993, which states that, subject to the provisions of any other law, the Registrar of Trade Marks may refuse an application for registration of a trade mark in which the “©” appears or which may be construed to import a reference to registration.

The basic function of the trademark is that it must be capable of distinguishing a company’s goods or services from those of another, and the Trade Marks Act provides that a trademark will not be registered if it consists exclusively of a sign or indication that has become customary in the current language, such as the copyright symbol, which has become known for indicating copyright materials.

Cell C can make representations to try to overcome the refusal of the registration of its trade mark and, if refusals still follow, the mobile operator may approach a court for relief, says Hollesen.

“Cell C may have expected the difficulties in registering this specific logo, as the company has registered several other trademarks simultaneously. I think the company was fully aware of what was going to happen and its campaign has garnered a lot of attention surrounding the copyright issue,” says Hollesen.

She says that, from a marketing perspective, the campaign and use of the logo are working, but from a trademark perspective, Cell C will not be able to register ‘c’ in the circle on its own as a trade mark in terms of the Trade Marks Act.