Dis-Chem, a leading retail pharmacy, has taken swift action amid Sol de Janeiro, a skincare and fragrance brand’s authenticity concerns after some buyers began questioning the product’s authenticity.
The pharmacy has swiftly removed all Sol de Janeiro items from its shelves and is currently in the process of testing the products to determine whether their supplier had provided them with genuine goods.
Complaints emerged, with customers noting that the scent differed from those sold overseas and that the scent faded rather quickly.
The action to remove the products of this US brand from shelves underscores the significance of vigilance in safeguarding customer trust and global brand reputation, setting a strong precedent for other retailers.
It is further explained that in South Africa, a registered trade mark owner has the exclusive right to prevent the use of a mark that is confusingly or deceptively similar to their trade mark concerning their registered goods and services.
The mark’s fragrance is awaiting registration because it has been approved for use in South Africa.
When asked for a legal opinion, Jani Cronjé, partner and trade mark attorney at Adams & Adams, advised that Sol de Janeiro is a well-known mark with a substantial reputation in South Africa.
As a result, the fragrance is entitled to trade mark protection and would be able to pursue the following actions:
Passing Off
The action of the supplier in using the identical trade mark and packaging, constitutes a misrepresentation that has deceived members of the public and which will clearly cause damage to the proprietor. This amounts to passing-off and unlawful competition under common law.
Trade Mark Infringement
Notably, well-known international trade marks recognised under the Paris Convention are afforded protection, even in the absence of a South African trade mark registration.
It has been made quite clear that the Sol de Janeiro mark is well-known among the relevant skincare market in South Africa. The use of the identical mark, in relation to identical goods, in this context would undoubtedly cause deception or confusion, constituting infringement under Section 35 of the Trade Marks Act.
Counterfeit Goods
Although it is possible to proceed with anti-counterfeiting measures on the basis that a mark is well-known, this process can be more complicated if the mark is not registered.
It is said that there are circumstances that would warrant immediate steps, and these further steps include filing a criminal complaint with the South African Police Service, after which the designated police officer will apply for a search and seizure warrant.
If the warrant is granted by the magistrate in the relevant jurisdiction, the South African Police Service will execute the warrant, seizing and removing all the goods to the anti-counterfeit depot.