Esquire Electronics Ltd. v Executive Video (270/84) [1986] ZASCA 12; [1986] 2 All SA 210 (A) (13 March 1986)

Esquire Electronics Ltd. v Executive Video (270/84) [1986] ZASCA 12; [1986] 2 All SA 210 (A) (13 March 1986)

The Supreme Court of Appeal held that the reproduction and distribution of video cassettes bearing the appellant's trade marks, which appear visually on the television screen when played, constitutes use of the trade marks in relation to goods for which the marks are registered. The court found that such use is in the course of trade and indicates the origin of the goods, thereby infringing section 44(1)(a) of the Trade Marks Act. The court rejected the respondent's argument that the visual representation of the mark on the screen is not use in relation to the goods, holding that the images derived from a video tape are the translation of information recorded on the tape and are not...

Citation
[1986] ZASCA 12
Parties
Appellant: Esquire Electronics Limited; Respondent: Executive Video
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
13 March 1986
Case Number
270/84
Procedural Posture
Civil Appeal / Appeal From Order of Durban and Coast Local Division
Outcome
Appeal upheld. The order of the court a quo is set aside and replaced with an interdict against the respondent for trade mark infringement. Costs awarded to the appellant, including costs of two counsel.
Judges
CORBETT, HOEXTER, JACOBS, SMALBERGER, NICHOLAS
Legal Topics
Trade Mark Infringement, Visual Representation of Mark, Use in Relation to Goods, Registration Validity, Delictual Liability
Intellectual Property Commercial and Corporate Trade Mark Infringement Visual Representation of Mark Use in Relation to Goods Registration Validity Delictual Liability

Case Brief

Summary, issues, holding and outcome

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Parties

Esquire Electronics Limited

Appellant

Executive Video

Respondent

Procedural Posture

Civil Appeal / Appeal From Order of Durban and Coast Local Division

Legal Issues

  1. 1 Whether the reproduction and distribution of video cassettes bearing the appellant's trade marks constitutes infringement under section 44(1)(a) of the Trade Marks Act.
  2. 2 Whether the visual representation of the trade mark on a television screen amounts to 'use' in relation to goods for purposes of trade mark infringement.
  3. 3 Whether the registration of the trade marks in respect of video tapes is valid.

Ratio Decidendi

The Supreme Court of Appeal held that the reproduction and distribution of video cassettes bearing the appellant's trade marks, which appear visually on the television screen when played, constitutes use of the trade marks in relation to goods for which the marks are registered. The court found that such use is in the course of trade and indicates the origin of the goods, thereby infringing section 44(1)(a) of the Trade Marks Act. The court rejected the respondent's argument that the visual representation of the mark on the screen is not use in relation to the goods, holding that the images derived from a video tape are the translation of information recorded on the tape and are not...

Court Disposition

Appeal upheld. The order of the court a quo is set aside and replaced with an interdict against the respondent for trade mark infringement. Costs awarded to the appellant, including costs of two counsel.

Orders

  • The appeal is upheld with costs, including the costs of two counsel.
  • The order of the court a quo is set aside and substituted with an order interdicting and restraining the respondent, its agents and servants, from infringing Trade Mark Nos 80/1576 and 80/1577 contrary to section 44(1)(a) of the Trade Marks Act No 62 of 1963 by using the said trade marks in relation to video...