Etraction (Pty) Ltd v Tyrecor (Pty) Ltd (28/5/2015) [2015] ZASCA 78; 2015 BIP 253 (SCA) (28 May 2015)

Etraction (Pty) Ltd v Tyrecor (Pty) Ltd (28/5/2015) [2015] ZASCA 78; 2015 BIP 253 (SCA) (28 May 2015)

The respondent, through its predecessor Falck, established continuous and bona fide use of the Infinity mark in relation to tyres in South Africa from 2006, predating the appellant's registration in 2008. This prior use was sufficient to invoke the defence under section 36(1) of the Trade Marks Act, as Falck had built up a protectable reputation and goodwill in the mark. The appellant never used the mark in relation to tyres and registered it only after learning of the respondent's business, with the ulterior motive of disrupting competition. The registration of the mark in respect of tyres was made without bona fide intention to use and was therefore subject to expungement under section...

Citation
[2015] ZASCA 78
Parties
Appellant: Etraction (Pty) Ltd; Respondent: Tyrecor (Pty) Ltd
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
28 May 2015
Case Number
20185/2014
Procedural Posture
Civil Appeal / Appeal From Western Cape Division of the High Court
Outcome
Appeal dismissed except for amendment of the expungement order. The respondent's counter-application for expungement succeeds.
Judges
Mpati, Brand, Wallis, Saldulker, Mayat
Legal Topics
Trade Mark Infringement, Prior Bona Fide Use, Expungement of Trade Mark, Passing Off, Goodwill, Registration Ulterior Motive
Intellectual Property Commercial and Corporate Trade Mark Infringement Prior Bona Fide Use Expungement of Trade Mark Passing Off Goodwill Registration Ulterior Motive

Case Brief

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Parties

Etraction (Pty) Ltd

Appellant

Tyrecor (Pty) Ltd

Respondent

Procedural Posture

Civil Appeal / Appeal From Western Cape Division of the High Court

Legal Issues

  1. 1 Whether the respondent's use of the 'Infinity' mark infringed the appellant's registered trade mark.
  2. 2 Whether the respondent or its predecessor established continuous and bona fide prior use of the 'Infinity' mark under section 36(1) of the Trade Marks Act.
  3. 3 Whether the appellant's registration of the mark in respect of tyres was made without bona fide intention to use, justifying expungement under section 27(1) of the Act.

Ratio Decidendi

The respondent, through its predecessor Falck, established continuous and bona fide use of the Infinity mark in relation to tyres in South Africa from 2006, predating the appellant's registration in 2008. This prior use was sufficient to invoke the defence under section 36(1) of the Trade Marks Act, as Falck had built up a protectable reputation and goodwill in the mark. The appellant never used the mark in relation to tyres and registered it only after learning of the respondent's business, with the ulterior motive of disrupting competition. The registration of the mark in respect of tyres was made without bona fide intention to use and was therefore subject to expungement under section...

Court Disposition

Appeal dismissed except for amendment of the expungement order. The respondent's counter-application for expungement succeeds.

Orders

  • Save for paragraph 2 of this order the appeal is dismissed with costs, including costs for two counsel where employed.
  • The counter-application succeeds with costs and the Registrar is directed in terms of section 24(1) of the Trade Marks Act to expunge the word 'tires' from the applicant's trade mark registration and to amend the registration to read 'Vehicle components and Accessories: wheels and rims, but not including tyres'.