Strydom v Bader and Others (9830/2010) [2010] ZAWCHC 223; 2010 BIP 192 (WCC) (26 October 2010)

Strydom v Bader and Others (9830/2010) [2010] ZAWCHC 223; 2010 BIP 192 (WCC) (26 October 2010)

The court found that Darling Cellars had abandoned the trade mark, rendering it res derelicta. Both Von Waltsleben and first respondent began using the mark after its abandonment, but first respondent's claim to use was based on a false assertion of an agreement with Darling Cellars. The court accepted Sheppard's evidence that no such agreement existed. First respondent's use was therefore not bona fide, as it was founded on fraudulent misrepresentation. Von Waltsleben, on the other hand, acted bona fide in applying for registration after confirming with Darling Cellars that there was no objection to his use. Although Von Waltsleben's use was of limited duration, he proposed to use the...

Citation
[2010] ZAWCHC 223
Parties
Applicant: André de Vos Strydom; Respondent: Walter Karl Bader; Respondent: Viva Africa Wines CC t/a W K Wines; Respondent: Salesmax 18 CC t/a Railway Bar and Liquor Store
Court
Western Cape High Court, Cape Town
Jurisdiction
South Africa
Judgment Date
26 October 2010
Case Number
9830/2010
Procedural Posture
Civil Application / Judgment on Infringement and Counter Application for Expungement
Outcome
Applicant's infringement application is granted; respondents' counter-application for expungement or suspension is dismissed.
Judges
Blignault
Legal Topics
Trade Mark Infringement, Bona Fide Claim to Proprietorship, Expungement of Trade Mark, Honest Concurrent User, Mala Fide Registration
Intellectual Property Commercial and Corporate Trade Mark Infringement Bona Fide Claim to Proprietorship Expungement of Trade Mark Honest Concurrent User Mala Fide Registration

Case Brief

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Parties

André de Vos Strydom

Applicant

Walter Karl Bader

Respondent

Viva Africa Wines CC t/a W K Wines

Respondent

Salesmax 18 CC t/a Railway Bar and Liquor Store

Respondent

Procedural Posture

Civil Application / Judgment on Infringement and Counter Application for Expungement

Legal Issues

  1. 1 Whether respondents infringed applicant's registered trade mark under section 34(1)(a) of the Trade Marks Act.
  2. 2 Whether respondents or their predecessors made continuous and bona fide use of the trade mark from a date anterior to applicant or his predecessors under section 36(1).
  3. 3 Whether the trade mark registration was made mala fide or without a bona fide claim to proprietorship under sections 10(3) and 10(7).

Ratio Decidendi

The court found that Darling Cellars had abandoned the trade mark, rendering it res derelicta. Both Von Waltsleben and first respondent began using the mark after its abandonment, but first respondent's claim to use was based on a false assertion of an agreement with Darling Cellars. The court accepted Sheppard's evidence that no such agreement existed. First respondent's use was therefore not bona fide, as it was founded on fraudulent misrepresentation. Von Waltsleben, on the other hand, acted bona fide in applying for registration after confirming with Darling Cellars that there was no objection to his use. Although Von Waltsleben's use was of limited duration, he proposed to use the...

Court Disposition

Applicant's infringement application is granted; respondents' counter-application for expungement or suspension is dismissed.

Orders

  • First, second and third respondents are restrained from infringing applicant's rights in trade mark registration no 2004/13744 Late Harvest Sunrise/Sonstraal by using, in the course of trade in relation to alcoholic beverages, applicant's trade mark or any confusingly or deceptively similar mark.
  • First, second and third respondents must remove the infringing mark from all material in their possession.