Pepkor Retail (Proprietary) Limited v Truworths Limited (900/2015) [2016] ZASCA 146; 2016 BIP 286 (SCA) (30 September 2016)

Pepkor Retail (Proprietary) Limited v Truworths Limited (900/2015) [2016] ZASCA 146; 2016 BIP 286 (SCA) (30 September 2016)

The court found that THE LOOK is a generic, descriptive term in the fashion retail industry, referring to style or fashion, and is widely used by competitors. There was no evidence of inherent distinctiveness at the time of registration, nor of acquired distinctiveness through use. Truworths failed to provide independent evidence of public perception or market surveys demonstrating that THE LOOK had become associated with its goods. The mark was always used in conjunction with TRUWORTHS or BASIX, further undermining any claim to acquired distinctiveness. Consequently, the mark was not capable of distinguishing Truworths' goods and was liable to be removed from the register under sections...

Citation
[2016] ZASCA 146
Parties
Appellant: Pepkor Retail (Proprietary) Limited; Respondent: Truworths Limited
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
30 September 2016
Case Number
900/2015
Procedural Posture
Civil Appeal / Appeal From Western Cape Division of the High Court, Cape Town
Outcome
Appeal upheld; main application dismissed; counter-application for expungement of the trade mark granted.
Judges
Navsa, Cachalia, Zondi, Mathopo, Van der Merwe
Legal Topics
Trade Mark Registration, Distinctiveness, Expungement of Trade Mark, Trade Mark Infringement, Passing Off, Retail Fashion Industry
Intellectual Property Commercial and Corporate Trade Mark Registration Distinctiveness Expungement of Trade Mark Trade Mark Infringement Passing Off Retail Fashion Industry

Case Brief

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Parties

Pepkor Retail (Proprietary) Limited

Appellant

Truworths Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From Western Cape Division of the High Court, Cape Town

Legal Issues

  1. 1 Whether the registered trade mark THE LOOK is inherently or acquiredly distinctive and thus capable of distinguishing Truworths' goods.
  2. 2 Whether the mark should be removed from the trade mark register under sections 10(1) and 10(2) of the Trade Marks Act 194 of 1993.
  3. 3 Whether Ackermans' use of THE LOOK FOR LESS infringed Truworths' trade mark rights or constituted passing off.

Ratio Decidendi

The court found that THE LOOK is a generic, descriptive term in the fashion retail industry, referring to style or fashion, and is widely used by competitors. There was no evidence of inherent distinctiveness at the time of registration, nor of acquired distinctiveness through use. Truworths failed to provide independent evidence of public perception or market surveys demonstrating that THE LOOK had become associated with its goods. The mark was always used in conjunction with TRUWORTHS or BASIX, further undermining any claim to acquired distinctiveness. Consequently, the mark was not capable of distinguishing Truworths' goods and was liable to be removed from the register under sections...

Court Disposition

Appeal upheld; main application dismissed; counter-application for expungement of the trade mark granted.

Orders

  • The appeal is upheld with costs, including the costs of two counsel.
  • The order of the court a quo is set aside and replaced with: (a) The main application is dismissed with costs, including the costs of two counsel. (b) The counter-application is granted and an order is made: (i) cancelling the first respondent’s trade mark registration number 1998/05493-5 in classes 16, 25 and 35;...