Oilwell (Pty) Ltd v Protec International Ltd and Others (295/10) [2011] ZASCA 29; 2011 (4) SA 394 (SCA); 2011 BIP 400 (SCA) (18 March 2011)

Oilwell (Pty) Ltd v Protec International Ltd and Others (295/10) [2011] ZASCA 29; 2011 (4) SA 394 (SCA); 2011 BIP 400 (SCA) (18 March 2011)

The Supreme Court of Appeal held that trade marks are not 'capital' within the meaning of regulation 10(1)(c) of the Exchange Control Regulations. The term 'capital' is used in a financial sense and does not include all assets with monetary value. Trade marks, like other intellectual property rights, are territorial...

Source-derived case information.

Citation
[2011] ZASCA 29
Parties
Appellant: Oilwell (Pty) Limited; Respondent: Protec International Limited; Respondent: Protec Auto Care Limited; Respondent: The Registrar of Trade Marks
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
18 March 2011
Case Number
295/10
Procedural Posture
Civil Appeal / Appeal From North Gauteng High Court (pretoria)
Outcome
Appeal dismissed with costs, including the costs of two counsel.
Judges
Harms, Lewis, Ponnan, Malan, Theron
Legal Topics
Exchange Control Regulations, Assignment of Trade Marks, Rectification of Register, Statutory Interpretation, Voidness of Contracts, Territoriality of Ip Rights
Commercial and Corporate Civil Procedure Intellectual Property Exchange Control Regulations Assignment of Trade Marks Rectification of Register Statutory Interpretation Voidness of Contracts +1 more

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Summary, issues, holding and outcome

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Parties

Oilwell (Pty) Limited

Appellant

Protec International Limited

Respondent

Protec Auto Care Limited

Respondent

The Registrar of Trade Marks

Respondent

Procedural Posture

Civil Appeal / Appeal From North Gauteng High Court (pretoria)

Legal Issues

  1. 1 Whether the assignment of a South African trade mark to a foreign company without prior Treasury consent constitutes the export of capital under Exchange Control Regulations.
  2. 2 Whether trade marks are 'capital' within the meaning of regulation 10(1)(c).
  3. 3 Whether non-compliance with regulation 10(1)(c) renders the assignment agreement void.

Ratio Decidendi

The Supreme Court of Appeal held that trade marks are not 'capital' within the meaning of regulation 10(1)(c) of the Exchange Control Regulations. The term 'capital' is used in a financial sense and does not include all assets with monetary value. Trade marks, like other intellectual property rights, are territorial and akin to immovables, and cannot be exported. The assignment of the trade mark to a foreign company did not constitute the export of capital. Furthermore, even if Treasury consent was required, the absence of such consent does not render the assignment agreement void. The Regulations provide for criminal and administrative penalties, but do not expressly invalidate...

Court Disposition

Appeal dismissed with costs, including the costs of two counsel.

Orders

  • The appeal is dismissed with costs, including the costs of two counsel.