Bousaada (Pty) Ltd and Another v FCB Africa (Pty) Ltd and Another (16949/2021 ; 29891/2021) [2023] ZAGPJHC 863 (3 August 2023)

Bousaada (Pty) Ltd and Another v FCB Africa (Pty) Ltd and Another (16949/2021 ; 29891/2021) [2023] ZAGPJHC 863 (3 August 2023)

The court found that FCB Africa failed to raise any new issues in its applications for leave to appeal, and that all arguments had been addressed in the original judgment. The conduct of FCB Africa satisfied all elements of trade mark infringement as contemplated in the Trade Marks Act, and the apprehension of continued infringement remained. The evidence supported the distinctiveness and reputation of the 'MINA' mark in the relevant context. The threshold for granting leave to appeal under s 17(1)(a)(i) of the Superior Courts Act is stringent, requiring more than a mere possibility of success. The court was not persuaded that another court would reach different factual or legal...

Citation
[2023] ZAGPJHC 863
Parties
Applicant: Bousaada (Pty) Limited; Applicant: Mina Foundation NPC; Respondent: FCB Africa (Pty) Limited; Respondent: Global Environment & Technology Foundation; Applicant: FCB Africa (Pty) Limited; Respondent: Bousaada (Pty) Limited; Respondent: Registrar of Trade Marks
Court
South Gauteng High Court, Johannesburg
Jurisdiction
South Africa
Judgment Date
3 August 2023
Case Number
16949/2021 ; 29891/2021
Procedural Posture
Leave to Appeal / Application for Leave to Appeal Following Judgment on Interdict and Expungement
Outcome
Leave to appeal refused in both cases; costs awarded against FCB Africa (Pty) Limited, including costs of two counsel where employed.
Judges
Adams
Legal Topics
Trade Mark Infringement, Passing Off, Expungement of Trade Marks, Unlawful Competition, Leave to Appeal, Costs Orders
Intellectual Property Civil Procedure Trade Mark Infringement Passing Off Expungement of Trade Marks Unlawful Competition Leave to Appeal Costs Orders

Case Brief

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Parties

Bousaada (Pty) Limited

Applicant

Mina Foundation NPC

Applicant

FCB Africa (Pty) Limited

Respondent

Global Environment & Technology Foundation

Respondent

FCB Africa (Pty) Limited

Applicant

Bousaada (Pty) Limited

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Leave to Appeal / Application for Leave to Appeal Following Judgment on Interdict and Expungement

Legal Issues

  1. 1 Whether FCB Africa (Pty) Limited has reasonable prospects of success on appeal against the findings of trade mark infringement, passing-off, and unlawful competition.
  2. 2 Whether the trade marks registered by Bousaada (Pty) Limited and Mina Foundation NPC are vulnerable to expungement.
  3. 3 Whether the word 'MINA' is sufficiently distinctive to warrant trade mark protection in the relevant context.

Ratio Decidendi

The court found that FCB Africa failed to raise any new issues in its applications for leave to appeal, and that all arguments had been addressed in the original judgment. The conduct of FCB Africa satisfied all elements of trade mark infringement as contemplated in the Trade Marks Act, and the apprehension of continued infringement remained. The evidence supported the distinctiveness and reputation of the 'MINA' mark in the relevant context. The threshold for granting leave to appeal under s 17(1)(a)(i) of the Superior Courts Act is stringent, requiring more than a mere possibility of success. The court was not persuaded that another court would reach different factual or legal...

Court Disposition

Leave to appeal refused in both cases; costs awarded against FCB Africa (Pty) Limited, including costs of two counsel where employed.

Orders

  • Under Case number 16949/2021, the application for leave to appeal of FCB Africa (Pty) Limited is dismissed with costs, including costs for two counsel, one being Senior Counsel where employed.
  • Under Case number 29891/2021, the application for leave to appeal of FCB Africa (Pty) Limited is dismissed with costs, including costs for two counsel, one being Senior Counsel where employed.