Turbek Trading CC v A & D Spitz Ltd and Another (565/08) [2009] ZASCA 158; [2010] 2 All SA 284 (SCA); 2009 BIP 219 (SCA) (27 November 2009)

Turbek Trading CC v A & D Spitz Ltd and Another (565/08) [2009] ZASCA 158; [2010] 2 All SA 284 (SCA); 2009 BIP 219 (SCA) (27 November 2009)

The court found that Spitz failed to establish an existing right in the 'KG' trade mark as at the date of Turbek's applications. Spitz's use of 'KG' was limited to a combination mark with 'Kurt Geiger', and there was no objective evidence of reputation in 'KG' simpliciter prior to 7 March 2000. The evidence presented was insufficient and contradicted by Spitz's own conduct regarding trade mark applications. The amendment of Turbek's application from 'KG Italia' to 'KG' did not prejudice Spitz, and any procedural complaint should have been addressed by review proceedings, which Spitz failed to institute. Delay by Spitz did not constitute a substantive defence. Consequently, Spitz's...

Citation
[2009] ZASCA 158
Parties
Appellant: Turbek Trading CC; Respondent: A & D Spitz Limited; Respondent: Registrar of Trade Marks
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
27 November 2009
Case Number
565/08
Procedural Posture
Civil Appeal / Appeal From High Court (tpd), First Instance
Outcome
Appeal upheld; application for expungement and related relief dismissed with costs.
Judges
Harms, Lewis, Ponnan, Mhlantla, Hurt
Legal Topics
Trade Mark Registration, Revocation of Trade Mark, Passing Off, Prior Rights, Amendment of Trade Mark Application
Intellectual Property Commercial and Corporate Trade Mark Registration Revocation of Trade Mark Passing Off Prior Rights Amendment of Trade Mark Application

Case Brief

Summary, issues, holding and outcome

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Parties

Turbek Trading CC

Appellant

A & D Spitz Limited

Respondent

Registrar of Trade Marks

Respondent

Procedural Posture

Civil Appeal / Appeal From High Court (tpd), First Instance

Legal Issues

  1. 1 Whether Spitz had an existing right in the 'KG' trade mark in class 25 as at the date of Turbek's applications.
  2. 2 Whether Turbek's registrations were liable to revocation under section 10(16) of the Trade Marks Act.
  3. 3 Whether Spitz established trade mark infringement or passing-off against Turbek.

Ratio Decidendi

The court found that Spitz failed to establish an existing right in the 'KG' trade mark as at the date of Turbek's applications. Spitz's use of 'KG' was limited to a combination mark with 'Kurt Geiger', and there was no objective evidence of reputation in 'KG' simpliciter prior to 7 March 2000. The evidence presented was insufficient and contradicted by Spitz's own conduct regarding trade mark applications. The amendment of Turbek's application from 'KG Italia' to 'KG' did not prejudice Spitz, and any procedural complaint should have been addressed by review proceedings, which Spitz failed to institute. Delay by Spitz did not constitute a substantive defence. Consequently, Spitz's...

Court Disposition

Appeal upheld; application for expungement and related relief dismissed with costs.

Orders

  • The appeal is upheld with costs.
  • The order of the court below is set aside and replaced with an order dismissing the application with costs.