Lee Riders Motorcycle Club v Jacobs and Another (027612) [2024] ZAGPPHC 568 (17 May 2024)

Lee Riders Motorcycle Club v Jacobs and Another (027612) [2024] ZAGPPHC 568 (17 May 2024)

The applicant, as a voluntary association, has established continuous use and reputation in the 'Lee Riders' word and device marks since its inception. The first respondent, having resigned from the club, has no bona fide claim to the marks, and neither he nor the NPC can lawfully claim proprietorship. Registration of the same name and logo by two different clubs in the same field would be deceptive and cause confusion, contravening sections 10(12) and 10(13) of the Trade Marks Act. The applicant's opposition was not unduly delayed, given the extension granted during the Covid-19 pandemic. The main relief sought by the applicant is justified, and the Registrar is directed to refuse the...

Citation
[2024] ZAGPPHC 568
Parties
Applicant: Lee Riders Motorcycle Club; Respondent: Nigel Jacobs; Respondent: Registrar of Trade Marks
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
17 May 2024
Case Number
027612
Procedural Posture
Review Application / Application for Extension of Time to Oppose Trade Mark Registration and Related Relief
Outcome
Application granted. The applicant's extension application is allowed, and the Registrar is directed to refuse the first respondent's trade mark application. The first respondent is ordered to pay the applicant's disbursements.
Judges
Swanepoel
Legal Topics
Trade Mark Proprietorship, Trade Mark Opposition, Deceptive and Confusing Marks, Voluntary Association Rights, Extension of Opposition Period, Mala Fide Registration
Intellectual Property Trade Mark Proprietorship Trade Mark Opposition Deceptive and Confusing Marks Voluntary Association Rights Extension of Opposition Period Mala Fide Registration

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Parties

Lee Riders Motorcycle Club

Applicant

Nigel Jacobs

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Review Application / Application for Extension of Time to Oppose Trade Mark Registration and Related Relief

Legal Issues

  1. 1 Whether the applicant is the common law proprietor of the 'Lee Riders' word and device marks.
  2. 2 Whether the first respondent or the Lee Riders NPC has any bona fide claim to proprietorship of the trade marks.
  3. 3 Whether the first respondent's trade mark application should be refused under sections 10(3), 10(12), 10(13), and 10(16) of the Trade Marks Act.

Ratio Decidendi

The applicant, as a voluntary association, has established continuous use and reputation in the 'Lee Riders' word and device marks since its inception. The first respondent, having resigned from the club, has no bona fide claim to the marks, and neither he nor the NPC can lawfully claim proprietorship. Registration of the same name and logo by two different clubs in the same field would be deceptive and cause confusion, contravening sections 10(12) and 10(13) of the Trade Marks Act. The applicant's opposition was not unduly delayed, given the extension granted during the Covid-19 pandemic. The main relief sought by the applicant is justified, and the Registrar is directed to refuse the...

Court Disposition

Application granted. The applicant's extension application is allowed, and the Registrar is directed to refuse the first respondent's trade mark application. The first respondent is ordered to pay the applicant's disbursements.

Orders

  • The applicant's extension application is granted.
  • The Registrar of Trade Marks is directed to refuse trade mark application no. 2015/12300 Lee Riders Logo in class 41 in the name of Nigel Jacobs in terms of section 21, read with sections 10(3), 10(4), 10(12), 10(13) and 10(16) of the Trade Marks Act, 1993.