CK3 LLC v Sun Mark Ltd and Another (28524/14) [2014] ZAGPPHC 921; 2014 BIP 283 (GP) (14 November 2014)

CK3 LLC v Sun Mark Ltd and Another (28524/14) [2014] ZAGPPHC 921; 2014 BIP 283 (GP) (14 November 2014)

The court found that the respondent had not discharged the onus of proving bona fide use of the BULLDOG trade mark as required by section 27(1)(b) of the Trade Marks Act. The respondent's use commenced only after 36 years of non-use, coinciding with settlement negotiations and the applicant's pending registration. The sales were negligible, limited to a single outlet, and not supported by sufficient factual explanation. The court drew a negative inference from the timing and circumstances of the use, concluding that it was orchestrated to frustrate the applicant's registration rather than to genuinely further the respondent's trade. In the absence of convincing evidence of bona fide use,...

Citation
[2014] ZAGPPHC 921
Parties
Applicant: CK3 LLC; Respondent: Sun Mark Ltd; Respondent: Registrar of Trade Marks
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
14 November 2014
Case Number
28524/14
Procedural Posture
Review Application / Application to Expunge Trade Mark Registration for Non Use
Outcome
Application granted; trade mark registration expunged.
Judges
Basson
Legal Topics
Trade Mark Expungement, Bona Fide Use, Non Use Removal, Onus of Proof, Judicial Discretion
Intellectual Property Trade Mark Expungement Bona Fide Use Non Use Removal Onus of Proof Judicial Discretion

Case Brief

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Parties

CK3 LLC

Applicant

Sun Mark Ltd

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Review Application / Application to Expunge Trade Mark Registration for Non Use

Legal Issues

  1. 1 Whether the respondent's use of the BULLDOG trade mark constitutes bona fide use as required by section 27(1)(b) of the Trade Marks Act.
  2. 2 Whether the trade mark should be expunged from the register due to non-use over a continuous period of five years.
  3. 3 Whether the respondent discharged the onus of proving genuine commercial exploitation of the trade mark.

Ratio Decidendi

The court found that the respondent had not discharged the onus of proving bona fide use of the BULLDOG trade mark as required by section 27(1)(b) of the Trade Marks Act. The respondent's use commenced only after 36 years of non-use, coinciding with settlement negotiations and the applicant's pending registration. The sales were negligible, limited to a single outlet, and not supported by sufficient factual explanation. The court drew a negative inference from the timing and circumstances of the use, concluding that it was orchestrated to frustrate the applicant's registration rather than to genuinely further the respondent's trade. In the absence of convincing evidence of bona fide use,...

Court Disposition

Application granted; trade mark registration expunged.

Orders

  • The Registrar of Trade Marks is ordered to rectify the Register of Trade Marks by removing trade mark registration no 1977/05373 BULLDOG in class 33 on the basis of section 27(1)(b) of the Trade Marks Act 194 of 1993.
  • The first respondent is ordered to pay the costs of this application.