Etraction (Pty) Ltd v Tyrecor (Pty) Ltd (16926/11 , 16926A/11) [2014] ZAWCHC 4; [2014] 2 All SA 90 (WCC); 2014 BIP 127 (WCC) (5 February 2014)

Etraction (Pty) Ltd v Tyrecor (Pty) Ltd (16926/11 , 16926A/11) [2014] ZAWCHC 4; [2014] 2 All SA 90 (WCC); 2014 BIP 127 (WCC) (5 February 2014)

The court found that the respondent and its predecessor, Falck Trading (Pty) Ltd, had made continuous and bona fide use of the INFINITY trade mark in relation to tyres prior to the applicant's registration. Section 36(1) of the Trade Marks Act protects such prior use, barring the applicant from restraining the respondent's use. The applicant failed to establish a bona fide claim to proprietorship or intention to use the mark on its own goods, as required by the Act. The applicant's conduct in registering the mark despite knowledge of the respondent's use constituted sharp practice and vitiated its claim. Consequently, the application for an interdict was dismissed, and the...

Citation
[2014] ZAWCHC 4
Parties
Applicant: Etraction (Pty) Ltd; Respondent: Tyrecor (Pty) Ltd; Respondent: Registrar of Trade Marks
Court
Western Cape High Court, Cape Town
Jurisdiction
South Africa
Judgment Date
5 February 2014
Case Number
16926/11 , 16926A/11
Procedural Posture
Urgent Application / Judgment on Application for Interdict and Counter Application for Partial Expungement
Outcome
Application for interdict dismissed; counter-application for partial expungement granted.
Judges
Salie-Samuels
Legal Topics
Trade Mark Infringement, Prior Use Defence, Expungement of Registration, Bona Fide Proprietorship, Passing Off, Territorial Nature of Trademarks
Intellectual Property Trade Mark Infringement Prior Use Defence Expungement of Registration Bona Fide Proprietorship Passing Off Territorial Nature of Trademarks

Case Brief

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Parties

Etraction (Pty) Ltd

Applicant

Tyrecor (Pty) Ltd

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Urgent Application / Judgment on Application for Interdict and Counter Application for Partial Expungement

Legal Issues

  1. 1 Whether the applicant is entitled to an interdict restraining the respondent from infringing its registered trade mark INFINITY.
  2. 2 Whether the respondent's prior use of the trade mark INFINITY constitutes a defence under section 36(1) of the Trade Marks Act.
  3. 3 Whether the applicant had a bona fide claim to proprietorship and intention to use the trade mark in respect of tyres.

Ratio Decidendi

The court found that the respondent and its predecessor, Falck Trading (Pty) Ltd, had made continuous and bona fide use of the INFINITY trade mark in relation to tyres prior to the applicant's registration. Section 36(1) of the Trade Marks Act protects such prior use, barring the applicant from restraining the respondent's use. The applicant failed to establish a bona fide claim to proprietorship or intention to use the mark on its own goods, as required by the Act. The applicant's conduct in registering the mark despite knowledge of the respondent's use constituted sharp practice and vitiated its claim. Consequently, the application for an interdict was dismissed, and the...

Court Disposition

Application for interdict dismissed; counter-application for partial expungement granted.

Orders

  • The application for an interdict is dismissed with costs.
  • The counter-application for partial expungement of the trade mark registration is granted with costs.