Firstrand Bank Ltd v First Central Insurance Ltd and Another (21241/2012) [2014] ZAGPPHC 69; 2014 BIP 137 (GP) (7 February 2014)

Firstrand Bank Ltd v First Central Insurance Ltd and Another (21241/2012) [2014] ZAGPPHC 69; 2014 BIP 137 (GP) (7 February 2014)

The court found that the applicant had locus standi as it possessed a trading interest in the relevant class and in trade marks incorporating 'FIRST'. On the issue of defective entry, the court held that the applicant failed to provide sufficient evidence to rebut the presumption of validity and the Registrar's satisfaction with the representation under Regulation 13(4). Regarding section 27(1)(a), the court determined that the first respondent failed to discharge the onus of proving bona fide use of the trade mark. The evidence provided was sparse, limited to a few insurance claims and correspondence, and did not demonstrate commercial activity or serious intention to trade. The court...

Citation
[2014] ZAGPPHC 69
Parties
Applicant: Firstrand Bank Ltd; Respondent: First Central Insurance Ltd; Respondent: Registrar of Trade Marks
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
7 February 2014
Case Number
21241/2012
Procedural Posture
Review Application / Final Judgment on Application for Removal of Trade Mark Registration
Outcome
Application granted. Trade mark registration removed. Costs awarded against first respondent.
Judges
D S Fourie
Legal Topics
Trade Mark Expungement, Bona Fide Use, Locus Standi, Trade Marks Act 194 of 1993, Regulation 13 4 Compliance
Intellectual Property Trade Mark Expungement Bona Fide Use Locus Standi Trade Marks Act 194 of 1993 Regulation 13 4 Compliance

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 6 Authorities cited 11 Party arguments 2
Sign in to unlock

Parties

Firstrand Bank Ltd

Applicant

First Central Insurance Ltd

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Review Application / Final Judgment on Application for Removal of Trade Mark Registration

Legal Issues

  1. 1 Whether the applicant has locus standi to seek removal of the first respondent's trade mark registration.
  2. 2 Whether the entry of the first respondent's trade mark was wrongly made in the Register under section 24(1) and Regulation 13(4) of the Trade Marks Act.
  3. 3 Whether the first respondent's trade mark should be removed under section 27(1)(a) of the Trade Marks Act for lack of bona fide intention to use and actual use.

Ratio Decidendi

The court found that the applicant had locus standi as it possessed a trading interest in the relevant class and in trade marks incorporating 'FIRST'. On the issue of defective entry, the court held that the applicant failed to provide sufficient evidence to rebut the presumption of validity and the Registrar's satisfaction with the representation under Regulation 13(4). Regarding section 27(1)(a), the court determined that the first respondent failed to discharge the onus of proving bona fide use of the trade mark. The evidence provided was sparse, limited to a few insurance claims and correspondence, and did not demonstrate commercial activity or serious intention to trade. The court...

Court Disposition

Application granted. Trade mark registration removed. Costs awarded against first respondent.

Orders

  • Trade mark registration No. 1998/03956 FIRST CENTRAL INSURANCE and device in Class 36 registered in the name of the first respondent is removed from the Register in terms of section 27(1)(a) of the Trade Marks Act 194 of 1993.
  • The first respondent is ordered to pay the costs of this application.