Dix v Calzanetto Sociedad Limitada (A5002/2019) [2019] ZAGPJHC 499; 2019 BIP 196 (GJ) (12 December 2019)

Dix v Calzanetto Sociedad Limitada (A5002/2019) [2019] ZAGPJHC 499; 2019 BIP 196 (GJ) (12 December 2019)

The court held that the unauthorised sale of genuine Calzanetto products by the appellant did not constitute trade mark infringement under section 34(1)(a) of the Trade Marks Act. The function of a trade mark is to serve as a badge of origin, indicating the source of the goods, not to grant the proprietor a monopoly over the resale of genuine goods. The appellant's sale of unaltered, genuine goods bearing the trade mark was lawful and protected by section 34(2)(d). The use of the trade mark on invoices, while potentially creating the impression of a trade association, did not amount to infringement unless it deceived or confused consumers as to the origin of the goods. The lower court's...

Citation
[2019] ZAGPJHC 499
Parties
Appellant: Peter Grant Dix; Respondent: Calzanetto Sociedad Limitada
Court
South Gauteng High Court, Johannesburg
Jurisdiction
South Africa
Judgment Date
12 December 2019
Case Number
A5002/2019
Procedural Posture
Civil Appeal / Appeal From High Court Judgment; Supreme Court of Appeal Granted Leave
Outcome
Appeal upheld; application dismissed with costs.
Judges
T P Mudau, K E Matojane, L Windell
Legal Topics
Trade Mark Infringement, Parallel Importation, Badge of Origin, Unauthorised Use, Passing Off
Intellectual Property Commercial and Corporate Trade Mark Infringement Parallel Importation Badge of Origin Unauthorised Use Passing Off

Case Brief

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Parties

Peter Grant Dix

Appellant

Calzanetto Sociedad Limitada

Respondent

Procedural Posture

Civil Appeal / Appeal From High Court Judgment; Supreme Court of Appeal Granted Leave

Legal Issues

  1. 1 Whether the unauthorised sale of genuine trade mark holder's products constitutes infringement under section 34(1)(a) of the Trade Marks Act.
  2. 2 Whether the use of a trade mark on invoices without the owner's consent contravenes section 34(1)(a) of the Trade Marks Act.
  3. 3 Whether section 34(2)(d) of the Trade Marks Act provides a defence for the appellant's conduct.

Ratio Decidendi

The court held that the unauthorised sale of genuine Calzanetto products by the appellant did not constitute trade mark infringement under section 34(1)(a) of the Trade Marks Act. The function of a trade mark is to serve as a badge of origin, indicating the source of the goods, not to grant the proprietor a monopoly over the resale of genuine goods. The appellant's sale of unaltered, genuine goods bearing the trade mark was lawful and protected by section 34(2)(d). The use of the trade mark on invoices, while potentially creating the impression of a trade association, did not amount to infringement unless it deceived or confused consumers as to the origin of the goods. The lower court's...

Court Disposition

Appeal upheld; application dismissed with costs.

Orders

  • The application is dismissed with costs.