Reckitt Benckiser SA (Pty) Ltd v Adcock Ingram Healthcare (Pty) Ltd (15717/04) [2005] ZAGPHC 27; 2005 BIP 114 (T) (11 March 2005)

Reckitt Benckiser SA (Pty) Ltd v Adcock Ingram Healthcare (Pty) Ltd (15717/04) [2005] ZAGPHC 27; 2005 BIP 114 (T) (11 March 2005)

The court found that while the applicant's trade mark 'WILD FLOWERS' was validly registered under the old Act and its original entry cannot be attacked, the mark is purely descriptive in relation to air fresheners and lacks distinctiveness. Both parties use the term to describe the scent and qualities of their products, and the evidence shows it is a common descriptive term in the trade. The respondent's use was bona fide and not intended to usurp goodwill. Under section 10(2) of the 1993 Act, the mark is not capable of distinguishing the applicant's goods from others and is wrongly remaining on the register. The respondent is entitled to expungement of the trade mark and the application...

Citation
[2005] ZAGPHC 27
Parties
Applicant: Reckitt Benckiser SA (Pty) Ltd; Respondent: Adcock Ingram Healthcare (Pty) Ltd
Court
High Courts - Gauteng
Jurisdiction
South Africa
Judgment Date
11 March 2005
Case Number
15717/04
Procedural Posture
Civil Application / Final Judgment
Outcome
Application dismissed with costs; counter-application for expungement of trade mark succeeds with costs.
Judges
E Bertelsmann
Legal Topics
Trade Mark Expungement, Distinctiveness, Descriptive Use, Trade Mark Infringement, Bona Fide Description, Costs Award
Intellectual Property Commercial and Corporate Trade Mark Expungement Distinctiveness Descriptive Use Trade Mark Infringement Bona Fide Description Costs Award

Case Brief

Summary, issues, holding and outcome

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Parties

Reckitt Benckiser SA (Pty) Ltd

Applicant

Adcock Ingram Healthcare (Pty) Ltd

Respondent

Procedural Posture

Civil Application / Final Judgment

Legal Issues

  1. 1 Whether the applicant's trade mark was validly registered.
  2. 2 Whether the applicant's trade mark remains validly on the register as envisaged in section 24(1), read with section 10(1) and/or 10(2) of Act 194 of 1993.
  3. 3 Whether the use of the term 'Wild Flowers' is descriptive and generic rather than distinctive.

Ratio Decidendi

The court found that while the applicant's trade mark 'WILD FLOWERS' was validly registered under the old Act and its original entry cannot be attacked, the mark is purely descriptive in relation to air fresheners and lacks distinctiveness. Both parties use the term to describe the scent and qualities of their products, and the evidence shows it is a common descriptive term in the trade. The respondent's use was bona fide and not intended to usurp goodwill. Under section 10(2) of the 1993 Act, the mark is not capable of distinguishing the applicant's goods from others and is wrongly remaining on the register. The respondent is entitled to expungement of the trade mark and the application...

Court Disposition

Application dismissed with costs; counter-application for expungement of trade mark succeeds with costs.

Orders

  • The application is dismissed with costs.
  • The counter-application succeeds with costs.