Tekno-Medical Optik Chirurgie GMBH v Registrar of Trade Marks and Another (2015/59773) [2017] ZAGPPHC 609; 2017 BIP 119 (GP) (13 September 2017)

IN THE HIGH COURT OF SOUTH AFRICA

GAUTENG DIVISION, PRETORIA

CASE NO: 2015/59773

Not reportable

Not of interest to other judges

Revised

13 September 2017

In the matter between:

TEKNO – MEDICAL OPTIK CHIRURGIE GMBH Applicant

and

REGISTRAR OF TRADE MARKS First Respondent

TEKNO INSTRUMENTS AND MANUFACTURING CC Second Respondent

JUDGMENT [APPLICATION FOR LEAVE TO APPEAL]

ADAMS J:

[1]. I shall refer to the parties as referred to in the main application. The second respondent is the applicant in this application for leave to appeal.

[2]. The second respondent applies for leave to appeal against the whole of the judgment and the order, as well as the reasons therefor, which I granted on the 28th of July 2016. The order I granted was the following:

1. The second respondent's application to admit further evidence in the form of the tape recording is refused with cost;

2. The second respondent’s application to have the matter referred to trial, alternatively, to oral evidence on two specified issues, is refused with cost.

3. In terms of section 24(1), read with sections 10(3) and 10(12), of the Trade Marks Act, number 194 of 1993, trade mark registration no 2002/05799 ‘TEKNO’ in class 10 in the name of Tekno Instruments & Manufacturing CC, in relation to all goods for which it is registered, be and is hereby cancelled, removed and expunged from the Trade Marks Register.

4. The first respondent is directed to remove trade mark registration no 2002/05799 ‘TEKNO’ in class 10 in the name of Tekno Instruments & Manufacturing CC, from the register of trade marks pursuant to order (3) above.

5. The second respondent shall pay the applicant’s cost of this application, including the cost consequent upon the employment of Senior Counsel.

[3]. The application for leave to appeal is mainly against my factual findings. The second respondent submits that the court a quo erred in its finding that the applicant had discharged the onus resting on it to prove its case. Applying the principles laid down in Plascon Evans v Van Riebeeck Paints, 1984(3) SA 623 (AD), so it was submitted by the second respondent, I ought to have found that the applicant had not proven the essential elements for the claim to expunge the trade mark.

[4]. It was furthermore submitted on behalf of the second respondent that I erred in finding that factually and legally the second respondent was not a bona fide proprietor of the trade mark in the light of a number of facts, notably the fact that the second respondent had filed the trade mark on the 26th April 2002 and the applicant had been aware of this for a number of years and continued doing business with the second respondent and at no stage objecting to the trade mark. A further fact which I should have taken into account is that the applicant attempted to acquire from the second respondent the trade mark during 2008, which supports the second respondent’s contention, so the argument went, that it was a bona fide proprietor.

[5]. It was furthermore submitted on behalf of the second respondent that the court a quo erred in finding that the second respondent had not succeeded in proving that the applicant had waived its rights to the trade mark. The court a quo also erred in not admitting into evidence the recording which the second respondent put forward.

[6]. Lastly, the second respondent submits that the court a quo erred in its factual finding that the applicant had acquired a protectable reputation in South Africa in the light of the paucity of the evidence in that regard. It is also submitted that I erred in my rejection of the second respondent’s version that it sold other ‘TEKNO’ marked products from other suppliers in the light of the second respondent’s evidence to that effect.

[7]. The second respondent has raised nothing new in this application for leave to appeal. I have dealt with all the issues raised in this application for leave to appeal in my judgment and it is unnecessary to repeat those in full. Suffice to restate what I said in my judgment, that is that a reading of the second respondent’s papers reveals not one single piece of evidence in support of its assertion that it had sold products received from other suppliers, which it (the second respondent)

marked with the ‘TEKNO’ mark, and then on – sold. This weighed heavily on my mind and led me to the conclusion that the second respondent did not have a bona fide proprietorship in the mark.

[8]. The traditional test in deciding whether leave to appeal should be granted was whether there is a reasonable prospect that another court may come to a different conclusion to that reached by me in my judgment. Section 17(1)(a)(i) of the Superior Courts Act 10 of 2013, which came into operation on the 23rd of August 2013, provides that leave to appeal may only be given where the judge or judges concerned are of the opinion that ‘the appeal would have a reasonable prospect of success’.

[9]. In Mont Chevaux Trust v Tina Goosen, LCC 14R/2014 (unreported), the Land Claims Court held (in an obiter dictum) that the wording of this subsection raised the bar of the test that now has to be applied to the merits of the proposed appeal

before leave should be granted.

[10]. I am not persuaded that the issues raised by the second respondent in its application for leave to appeal are issues in respect of which another court is likely to reach different conclusions. I am therefore of the view that there are no reasonable prospect of another court coming to different conclusions, be they on aspects of fact or law, to the ones reached by me. The appeal does not, in my judgment, have a reasonable prospect of success.

[11]. Leave to appeal should therefore be refused.

Order

In the circumstances I make the following order:

The second respondent’s application for leave to appeal is dismissed with costs.

_________________________________

L ADAMS

Judge of the High Court

Gauteng Division, Pretoria

.

HEARD ON: 13th September 2017 JUDGMENT DATE: 13th September 2017 FOR THE APPLICANT: Adv R Michau SC NSTRUCTED BY: Adams & Adams FOR THE SECOND RESPONDENT: Adv H Worthington INSTRUCTED BY: Hahn & Hahn