A & D Spitz (Pty) Limited v Turbek Trading CC and Another (30814/07) [2008] ZAGPHC 194; 2008 BIP 209 (T) (12 May 2008)

A & D Spitz (Pty) Limited v Turbek Trading CC and Another (30814/07) [2008] ZAGPHC 194; 2008 BIP 209 (T) (12 May 2008)

The court held that mere delay in bringing the application does not result in forfeiture of the applicant's rights, as delay alone is not acquiescence and the Trade Marks Act does not prescribe a time limit for expungement applications. The applicant established a substantial reputation in the KG trademark prior to the first respondent's registration and use. The use of KG by the first respondent in relation to clothing, footwear, and related goods is likely to deceive or cause confusion among the public, justifying expungement under section 10(12) of the Trade Marks Act. The first respondent's use also amounts to passing off and infringement of the applicant's registered rights. The...

Citation
[2008] ZAGPHC 194
Parties
Applicant: A & D Spitz (Pty) Limited; Respondent: Turbek Trading CC; Respondent: Registrar of Trademarks
Court
High Courts - Gauteng
Jurisdiction
South Africa
Judgment Date
12 May 2008
Case Number
30814/07
Procedural Posture
Review Application / First Instance Judgment
Outcome
Application granted in favour of the applicant; first respondent's trademarks expunged and interdicts issued.
Judges
B R Du Plessis
Legal Topics
Trade Mark Expungement, Passing Off, Likelihood of Confusion, Acquiescence, Delay Rule, Infringement of Registered Mark
Intellectual Property Civil Procedure Trade Mark Expungement Passing Off Likelihood of Confusion Acquiescence Delay Rule Infringement of Registered Mark

Case Brief

Summary, issues, holding and outcome

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Parties

A & D Spitz (Pty) Limited

Applicant

Turbek Trading CC

Respondent

Registrar of Trademarks

Respondent

Procedural Posture

Review Application / First Instance Judgment

Legal Issues

  1. 1 Whether the applicant's delay in bringing the application results in forfeiture of rights to restrain the respondent's use of the KG trademark.
  2. 2 Whether the first respondent's KG trademarks are liable to be expunged from the register due to likelihood of deception or confusion under section 10(12) of the Trade Marks Act.
  3. 3 Whether the first respondent's use of the KG trademark amounts to passing off and infringement of the applicant's registered and common law rights.

Ratio Decidendi

The court held that mere delay in bringing the application does not result in forfeiture of the applicant's rights, as delay alone is not acquiescence and the Trade Marks Act does not prescribe a time limit for expungement applications. The applicant established a substantial reputation in the KG trademark prior to the first respondent's registration and use. The use of KG by the first respondent in relation to clothing, footwear, and related goods is likely to deceive or cause confusion among the public, justifying expungement under section 10(12) of the Trade Marks Act. The first respondent's use also amounts to passing off and infringement of the applicant's registered rights. The...

Court Disposition

Application granted in favour of the applicant; first respondent's trademarks expunged and interdicts issued.

Orders

  • Trade mark no: 2000/03828 KG in class 25 and trade mark no: 2000/13267 KG in class 35 are removed from the Register of Trade Marks.
  • The First Respondent is interdicted from passing-off its business or goods as those of the Applicant or as being connected in the course of trade with the Applicant, by using in regard thereto the trade mark KG, or any trade mark which is confusingly or deceptively similar to the Applicant's distinctive KG trade...