Safika Holdings (Pty) Ltd v Safika Office for Automation (39786/2005) [2015] ZAGPPHC 859; 2016 BIP 116 (GP) (11 December 2015)

Safika Holdings (Pty) Ltd v Safika Office for Automation (39786/2005) [2015] ZAGPPHC 859; 2016 BIP 116 (GP) (11 December 2015)

The court found that the respondent admitted in its affidavits to using the SAFIKA mark in relation to goods and services for which the applicant holds registered trade marks, and did not withdraw these admissions or contest subsequent allegations of increased infringement. The respondent failed to prove bona fide and continuous use of the mark prior to the applicant's registration, as required by section 36(1), with only two instances of offers to provide services within a short period before registration, which did not amount to substantial or trade mark use. The respondent's reliance on delay in prosecution was unsupported by evidence of serious prejudice or reputation, and the...

Citation
[2015] ZAGPPHC 859
Parties
Applicant: Safika Holdings (Pty) Ltd; Respondent: Safika Office for Automation (Pty) Ltd
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
11 December 2015
Case Number
39786/2005
Procedural Posture
Interdict Application / Final Hearing on Papers After Referral to Oral Evidence; Judgment Delivered
Outcome
Application granted. The respondent is interdicted from infringing the applicant's trade marks and ordered to remove infringing marks and pay costs.
Judges
R G Tolmay
Legal Topics
Trade Mark Infringement, Section 34 Trade Marks Act, Section 36 Trade Marks Act, Delay in Prosecution, Continuous Use, Bona Fide Use
Intellectual Property Commercial and Corporate Trade Mark Infringement Section 34 Trade Marks Act Section 36 Trade Marks Act Delay in Prosecution Continuous Use Bona Fide Use

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 6 Authorities cited 21 Party arguments 2
Sign in to unlock

Parties

Safika Holdings (Pty) Ltd

Applicant

Safika Office for Automation (Pty) Ltd

Respondent

Procedural Posture

Interdict Application / Final Hearing on Papers After Referral to Oral Evidence; Judgment Delivered

Legal Issues

  1. 1 Whether the respondent's use of the mark SAFIKA infringes the applicant's registered trade marks under section 34(1)(a) and (b) of the Trade Marks Act.
  2. 2 Whether the respondent can rely on the section 36(1) defence of continuous and bona fide prior use.
  3. 3 Whether delay in prosecution by the applicant bars the relief sought.

Ratio Decidendi

The court found that the respondent admitted in its affidavits to using the SAFIKA mark in relation to goods and services for which the applicant holds registered trade marks, and did not withdraw these admissions or contest subsequent allegations of increased infringement. The respondent failed to prove bona fide and continuous use of the mark prior to the applicant's registration, as required by section 36(1), with only two instances of offers to provide services within a short period before registration, which did not amount to substantial or trade mark use. The respondent's reliance on delay in prosecution was unsupported by evidence of serious prejudice or reputation, and the...

Court Disposition

Application granted. The respondent is interdicted from infringing the applicant's trade marks and ordered to remove infringing marks and pay costs.

Orders

  • The respondent is restrained in terms of section 34(1)(a) of the Trade Marks Act No. 194 of 1993 from infringing the rights in the applicant's trade mark registration Nos. 97/19660 SAFIKA in class 9, No 97/19661 SAFIKA in class 16, No. 97/19662 SAFIKA in class 35, No. 97/19663 SAFIKA in class 36, No. 98/11217 SAFIKA...
  • The respondent is restrained in terms of section 34(1)(b) of the Trade Marks Act No. 194 of 1993 from infringing the rights in the applicant's trade mark registration Nos. 97/19660 SAFIKA in class 9, No 97/19661 SAFIKA in class 16, No. 97/19662 SAFIKA in class 35, No. 97/19663 SAFIKA in class 36, No. 98/11217 SAFIKA...