AM Moolla Group Ltd and Others v Gap Inc and Others (123/2004) [2005] ZASCA 72; [2005] 4 All SA 245 (SCA); 2005 (6) SA 568 (SCA); 2005 BIP 281 (SCA) (9 September 2005)

AM Moolla Group Ltd and Others v Gap Inc and Others (123/2004) [2005] ZASCA 72; [2005] 4 All SA 245 (SCA); 2005 (6) SA 568 (SCA); 2005 BIP 281 (SCA) (9 September 2005)

The Supreme Court of Appeal held that the principle of territoriality governs trade mark rights in South Africa, and foreign use or registration does not preclude local adoption unless the mark was well known in South Africa at the time of local registration. The respondent failed to establish that its GAP marks were well known in South Africa prior to the appellants' adoption, and thus was not entitled to protection under section 35(3) of the Trade Marks Act or Article 6bis of the Paris Convention. The court found that the appellants failed to prove bona fide use or permitted use of the registered marks during the relevant period, as required by section 27(1)(b), and that the proprietor...

Citation
[2005] ZASCA 72
Parties
Appellant: A M Moolla Group Limited; Appellant: A M Moolla Clothing (Proprietary) Limited; Appellant: Salt of the Earth Creations (Proprietary) Limited; Appellant: Kingsgate Clothing Manufacturers (Proprietary) Limited; Appellant: Majestic Clothing Manufacturers (Proprietary) Limited; Appellant: Star Shirt & Clothing (Proprietary) Limited; Appellant: Rickemp (Proprietary) Limited; Respondent: The Gap Inc; Respondent: Gap (Apparel) Inc; Respondent: Gap (ITM) Inc
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
9 September 2005
Case Number
123/2004
Procedural Posture
Civil Appeal / Appeal From High Court Judgment
Outcome
Appeal against the interdict under section 35(3) upheld; appeal otherwise dismissed; cross-appeal under section 10(3) allowed; expungement of specified trade marks confirmed; costs awarded as specified.
Judges
Harms, Streicher, Brand, Lewis, Ponnan
Legal Topics
Trade Mark Registration, Well Known Marks, Territoriality Principle, Non Use Expungement, Paris Convention, Trade Mark Infringement
Intellectual Property Commercial and Corporate Trade Mark Registration Well Known Marks Territoriality Principle Non Use Expungement Paris Convention Trade Mark Infringement

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 22 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

A M Moolla Group Limited

Appellant

A M Moolla Clothing (Proprietary) Limited

Appellant

Salt of the Earth Creations (Proprietary) Limited

Appellant

Kingsgate Clothing Manufacturers (Proprietary) Limited

Appellant

Majestic Clothing Manufacturers (Proprietary) Limited

Appellant

Star Shirt & Clothing (Proprietary) Limited

Appellant

Rickemp (Proprietary) Limited

Appellant

The Gap Inc

Respondent

Gap (Apparel) Inc

Respondent

Gap (ITM) Inc

Respondent

Procedural Posture

Civil Appeal / Appeal From High Court Judgment

Legal Issues

  1. 1 Whether the respondents' GAP trade marks are entitled to protection in South Africa as well-known marks under the Paris Convention and Trade Marks Act.
  2. 2 Whether the appellants' registered trade marks should be expunged on the ground of non-use under section 27(1)(b) of the Trade Marks Act.
  3. 3 Whether the proprietor had a bona fide claim to proprietorship of the marks under section 10(3) of the Act.

Ratio Decidendi

The Supreme Court of Appeal held that the principle of territoriality governs trade mark rights in South Africa, and foreign use or registration does not preclude local adoption unless the mark was well known in South Africa at the time of local registration. The respondent failed to establish that its GAP marks were well known in South Africa prior to the appellants' adoption, and thus was not entitled to protection under section 35(3) of the Trade Marks Act or Article 6bis of the Paris Convention. The court found that the appellants failed to prove bona fide use or permitted use of the registered marks during the relevant period, as required by section 27(1)(b), and that the proprietor...

Court Disposition

Appeal against the interdict under section 35(3) upheld; appeal otherwise dismissed; cross-appeal under section 10(3) allowed; expungement of specified trade marks confirmed; costs awarded as specified.

Orders

  • The appeal against paragraph 3 of the order of the court below (the section 35(3) interdict) is upheld with costs, including costs of two counsel.
  • The appeal is otherwise dismissed.