Arbiter Di Marciano Alfonso & C.S.N.C. v Adamo Exclusive Mens Wear CC t/a Papoutsi (55428/2015) [2017] ZAGPPHC 7 (16 January 2017)

Arbiter Di Marciano Alfonso & C.S.N.C. v Adamo Exclusive Mens Wear CC t/a Papoutsi (55428/2015) [2017] ZAGPPHC 7 (16 January 2017)

The court found that the applicant, having for many years imported and distributed the opponent's ARBITER branded goods, subsequently began sourcing counterfeit goods from another, unnamed manufacturer. The applicant's conduct in applying for registration of the mark, while being fully aware of the opponent's rights and history with the mark, was held to be mala fide. The court was not satisfied that the opponent's mark was well-known in South Africa or that sufficient goodwill had been established to support other grounds of opposition. However, the mala fide nature of the applicant's registration attempt was sufficiently proven, and the application for registration was refused on this...

Citation
[2017] ZAGPPHC 7
Parties
Respondent: Arbiter Di Marciano Alfonso & C.S.N.C.; Applicant: Adamo Exclusive Mens Wear CC t/a Papoutsi
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
16 January 2017
Case Number
55428/2015
Procedural Posture
Opposition Application / Final Judgment
Outcome
Application for registration of the ARBITER mark in class 25 is refused with costs.
Judges
A.A. Louw
Legal Topics
Trade Mark Registration, Mala Fide Application, Well Known Mark, Passing Off, Deceptive Mark
Intellectual Property Trade Mark Registration Mala Fide Application Well Known Mark Passing Off Deceptive Mark

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Parties

Arbiter Di Marciano Alfonso & C.S.N.C.

Respondent

Adamo Exclusive Mens Wear CC t/a Papoutsi

Applicant

Procedural Posture

Opposition Application / Final Judgment

Legal Issues

  1. 1 Whether the applicant's application for registration of the ARBITER mark in class 25 should be refused on the basis of mala fide application under section 10(7) of the Trade Marks Act.
  2. 2 Whether the opponent's mark is well-known and entitled to protection under the Paris Convention.
  3. 3 Whether the applicant has a bona fide claim to proprietorship of the ARBITER mark.

Ratio Decidendi

The court found that the applicant, having for many years imported and distributed the opponent's ARBITER branded goods, subsequently began sourcing counterfeit goods from another, unnamed manufacturer. The applicant's conduct in applying for registration of the mark, while being fully aware of the opponent's rights and history with the mark, was held to be mala fide. The court was not satisfied that the opponent's mark was well-known in South Africa or that sufficient goodwill had been established to support other grounds of opposition. However, the mala fide nature of the applicant's registration attempt was sufficiently proven, and the application for registration was refused on this...

Court Disposition

Application for registration of the ARBITER mark in class 25 is refused with costs.

Orders

  • Application number 2011/14756 ARBITER in class 25 in the name of the applicant is refused with costs.