Roselt and Another v Bouwa Machinery South Africa (Pty) Ltd and Another (29672/2021 ; 30201/21) [2023] ZAGPJHC 576; 2023 BIP 4 (GJ) (25 May 2023)

Roselt and Another v Bouwa Machinery South Africa (Pty) Ltd and Another (29672/2021 ; 30201/21) [2023] ZAGPJHC 576; 2023 BIP 4 (GJ) (25 May 2023)

The court found that the applicants are the valid registered proprietors of the BOUWA trade mark, as evidenced by the certificates of registration. The respondents failed to rebut the prima facie evidence of valid proprietorship and did not provide credible or sufficient facts to support their claims of common law ownership or oral assignment. The alleged oral agreement was legally impossible under section 30(4) and 39(7) of the Trade Marks Act, which require written and signed assignments and prohibit partial assignments of associated marks. The respondents' continued use of the BOUWA mark after revocation of licence constituted infringement and passing off. The application for...

Citation
[2023] ZAGPJHC 576
Parties
Applicant: John Henry Roselt; Applicant: Air Rotory Services (Pty) Ltd; Respondent: Bouwa Machinery South Africa (Pty) Ltd; Respondent: Zhai, Caidong; Applicant: Bouwa Asia Group; Applicant: Shanghai Caidong International Trading Co; Respondent: APX Equipment (Pty) Ltd; Respondent: The Registrar of Trade Marks
Court
South Gauteng High Court, Johannesburg
Jurisdiction
South Africa
Judgment Date
25 May 2023
Case Number
29672/2021 ; 30201/21
Procedural Posture
Urgent Application / Judgment on Opposed Application and Counter Application
Outcome
Application granted in favour of the applicants; counter-application dismissed.
Judges
Wepener
Legal Topics
Trade Mark Registration, Trade Mark Infringement, Expungement of Trade Mark, Assignment of Trade Mark, Passing Off, Oral Agreement
Intellectual Property Commercial and Corporate Trade Mark Registration Trade Mark Infringement Expungement of Trade Mark Assignment of Trade Mark Passing Off Oral Agreement

Case Brief

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Parties

John Henry Roselt

Applicant

Air Rotory Services (Pty) Ltd

Applicant

Bouwa Machinery South Africa (Pty) Ltd

Respondent

Zhai, Caidong

Respondent

Bouwa Asia Group

Applicant

Shanghai Caidong International Trading Co

Applicant

APX Equipment (Pty) Ltd

Respondent

The Registrar of Trade Marks

Respondent

Procedural Posture

Urgent Application / Judgment on Opposed Application and Counter Application

Legal Issues

  1. 1 Whether the applicants are the valid registered proprietors of the BOUWA trade mark.
  2. 2 Whether the respondents have any bona fide claim to proprietorship or common law rights in the BOUWA trade mark.
  3. 3 Whether the trade mark registration should be expunged or assigned to the respondents.

Ratio Decidendi

The court found that the applicants are the valid registered proprietors of the BOUWA trade mark, as evidenced by the certificates of registration. The respondents failed to rebut the prima facie evidence of valid proprietorship and did not provide credible or sufficient facts to support their claims of common law ownership or oral assignment. The alleged oral agreement was legally impossible under section 30(4) and 39(7) of the Trade Marks Act, which require written and signed assignments and prohibit partial assignments of associated marks. The respondents' continued use of the BOUWA mark after revocation of licence constituted infringement and passing off. The application for...

Court Disposition

Application granted in favour of the applicants; counter-application dismissed.

Orders

  • The validity of registration of the BOUWA trade mark (certificates 2017/03273 and 2017/03281) is certified.
  • Respondents are interdicted and restrained from infringing the applicants' rights in trade mark numbers 2017/03273 and 2017/03281 for BOUWA in class 7 and class 11.