Lotte Confectionary Co Ltd v Orion Corporation (49422/2013) [2015] ZAGPPHC 316; 2015 BIP 224 (GP) (1 April 2015)

Lotte Confectionary Co Ltd v Orion Corporation (49422/2013) [2015] ZAGPPHC 316; 2015 BIP 224 (GP) (1 April 2015)

The court found that the evidence presented by the applicant did not establish that the registration of the CHOCOPIE mark was wrongly made in 1996, as the evidence did not reach back to the relevant date and the presumption of validity under section 51 applied. However, the court held that subsequent to...

Source-derived case information.

Citation
[2015] ZAGPPHC 316
Parties
Applicant: Lotte Confectionary Co Ltd; Respondent: Orion Corporation
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
1 April 2015
Case Number
49422/2013
Procedural Posture
Review Application / Application for Removal of Trade Mark Registration
Outcome
Application granted; trade mark registration expunged; costs awarded to applicant.
Judges
D S Fourie
Legal Topics
Trade Mark Expungement, Distinctiveness, Section 24 Trade Marks Act, Section 9 Trade Marks Act, Section 10 Trade Marks Act
Intellectual Property Trade Mark Expungement Distinctiveness Section 24 Trade Marks Act Section 9 Trade Marks Act Section 10 Trade Marks Act

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Summary, issues, holding and outcome

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Parties

Lotte Confectionary Co Ltd

Applicant

Orion Corporation

Respondent

Procedural Posture

Review Application / Application for Removal of Trade Mark Registration

Legal Issues

  1. 1 Whether the trade mark CHOCOPIE was wrongly made or wrongly remains on the Register under section 24(1) of the Trade Marks Act.
  2. 2 Whether the mark CHOCOPIE is capable of distinguishing the goods of the proprietor as required by section 9 and section 10(2)(a) of the Act.
  3. 3 Whether the mark has lost distinctiveness due to widespread use by other traders.

Ratio Decidendi

The court found that the evidence presented by the applicant did not establish that the registration of the CHOCOPIE mark was wrongly made in 1996, as the evidence did not reach back to the relevant date and the presumption of validity under section 51 applied. However, the court held that subsequent to registration, the mark had lost its distinctiveness due to widespread and extensive use of 'choco' and 'chocopie' by other traders in South Africa. The respondent failed to protect its interests, and the mark was no longer capable of distinguishing the goods of the proprietor. The requirements of section 9(1) read with section 10(2)(a) were not met, and the mark was ordered to be removed...

Court Disposition

Application granted; trade mark registration expunged; costs awarded to applicant.

Orders

  • Trade mark registration number 1996/01129 CHOCOPIE in Class 30 registered in the name of the respondent is removed from the Register in terms of section 24(1) of the Trade Marks Act 194 of 1993.
  • The respondent is ordered to pay the costs of this application.