Red Diamond Holdings SARL v Eye of the Storm 2 (Pty) Ltd (13280/18) [2019] ZAGPJHC 490; [2020] 1 All SA 829 (GJ); 2020 BIP 392 (GJ) (28 November 2019)

Red Diamond Holdings SARL v Eye of the Storm 2 (Pty) Ltd (13280/18) [2019] ZAGPJHC 490; [2020] 1 All SA 829 (GJ); 2020 BIP 392 (GJ) (28 November 2019)

The court found that the respondent's entitlement to manufacture and sell Lee Cooper branded apparel terminated with the sub-licence agreement in March 2017. The subsequent September 2017 agreement was an accommodation allowing the respondent to dispose of identified stock and pay royalties, but did not confer ongoing rights to use the trademark. Apparel manufactured or sold after the September 2017 agreement, not covered by its terms, constituted infringement of the applicant's trademark. The applicant did not make out a case for final interdictory relief, as there was no evidence of ongoing infringement, but was entitled to disclosure and accounting for the period in question. The...

Citation
[2019] ZAGPJHC 490
Parties
Applicant: Red Diamond Holdings SARL; Respondent: Eye of the Storm 2 (Pty) Ltd
Court
South Gauteng High Court, Johannesburg
Jurisdiction
South Africa
Judgment Date
28 November 2019
Case Number
13280/18
Procedural Posture
Civil Application / Final Hearing and Judgment
Outcome
The application for final interdictory relief is refused, but the applicant is granted disclosure and accounting orders against the respondent. Costs are awarded to the applicant.
Judges
Spilg
Legal Topics
Trade Marks Act, Sub Licensing, Reasonable Royalty, Accounting for Profits, Trademark Infringement
Intellectual Property Commercial and Corporate Trade Marks Act Sub Licensing Reasonable Royalty Accounting for Profits Trademark Infringement

Case Brief

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Parties

Red Diamond Holdings SARL

Applicant

Eye of the Storm 2 (Pty) Ltd

Respondent

Procedural Posture

Civil Application / Final Hearing and Judgment

Legal Issues

  1. 1 Whether the respondent infringed the applicant's registered Lee Cooper trademark after termination of the sub-licence agreement.
  2. 2 Whether the respondent was entitled to manufacture and sell Lee Cooper branded apparel post-termination.
  3. 3 Whether the applicant is entitled to disclosure, accounting, and damages or reasonable royalties under the Trade Marks Act.

Ratio Decidendi

The court found that the respondent's entitlement to manufacture and sell Lee Cooper branded apparel terminated with the sub-licence agreement in March 2017. The subsequent September 2017 agreement was an accommodation allowing the respondent to dispose of identified stock and pay royalties, but did not confer ongoing rights to use the trademark. Apparel manufactured or sold after the September 2017 agreement, not covered by its terms, constituted infringement of the applicant's trademark. The applicant did not make out a case for final interdictory relief, as there was no evidence of ongoing infringement, but was entitled to disclosure and accounting for the period in question. The...

Court Disposition

The application for final interdictory relief is refused, but the applicant is granted disclosure and accounting orders against the respondent. Costs are awarded to the applicant.

Orders

  • The respondent must disclose to the applicant, within 60 days, a detailed inventory of all Lee Cooper branded apparel in its possession as at 28 February 2017 and 28 February 2018.
  • The respondent must provide a complete and detailed list of all Lee Cooper branded apparel manufactured and/or imported since 28 July 2017, with supporting invoices and declarations to SARS.