Ussher Investment (Pty) Ltd v Elite Trade Centre and Others (6027/2005) [2006] ZAGPHC 209; 2006 BIP 199 (T) (26 May 2006)

Ussher Investment (Pty) Ltd v Elite Trade Centre and Others (6027/2005) [2006] ZAGPHC 209; 2006 BIP 199 (T) (26 May 2006)

The court found that the applicant is the registered proprietor of the 'GREEN AND YELLOW' trade mark for wheelbarrows and has established extensive use, reputation, and goodwill in the market. The respondents' wheelbarrows, painted in the identical colour combination, were found to be substantially identical and...

Source-derived case information.

Citation
[2006] ZAGPHC 209
Parties
Applicant: Ussher Investment (PTY) LTD; Respondent: Elite Trade Centre; Respondent: Carrim Group; Respondent: The Minister of Safety and Security; Respondent: Mister Movers CC
Court
High Courts - Gauteng
Jurisdiction
South Africa
Judgment Date
26 May 2006
Case Number
6027/2005
Procedural Posture
Civil Application / Judgment After Opposed Application and Counter Application
Outcome
Application granted in favour of the applicant; counter-application for expungement dismissed.
Judges
Bosielo
Legal Topics
Trade Mark Infringement, Passing Off, Counterfeit Goods Act, Distinctiveness of Trade Mark, Expungement of Trade Mark
Intellectual Property Commercial and Corporate Trade Mark Infringement Passing Off Counterfeit Goods Act Distinctiveness of Trade Mark Expungement of Trade Mark

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Summary, issues, holding and outcome

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Parties

Ussher Investment (PTY) LTD

Applicant

Elite Trade Centre

Respondent

Carrim Group

Respondent

The Minister of Safety and Security

Respondent

Mister Movers CC

Respondent

Procedural Posture

Civil Application / Judgment After Opposed Application and Counter Application

Legal Issues

  1. 1 Whether the respondents' wheelbarrows painted in green and yellow infringe the applicant's registered trade mark.
  2. 2 Whether the respondents' goods constitute counterfeit goods under the Counterfeit Goods Act.
  3. 3 Whether the applicant's trade mark 'GREEN AND YELLOW' is inherently or by use distinctive and capable of distinguishing its goods.

Ratio Decidendi

The court found that the applicant is the registered proprietor of the 'GREEN AND YELLOW' trade mark for wheelbarrows and has established extensive use, reputation, and goodwill in the market. The respondents' wheelbarrows, painted in the identical colour combination, were found to be substantially identical and likely to deceive or cause confusion among ordinary purchasers. The court held that the respondents' conduct amounted to infringement of the applicant's trade mark and passing-off, and that the goods seized were counterfeit under the Counterfeit Goods Act. The evidence demonstrated that the colour combination had acquired distinctiveness through use, and the respondents failed to...

Court Disposition

Application granted in favour of the applicant; counter-application for expungement dismissed.

Orders

  • The goods confiscated on 22 October 2004 from the first respondent's premises and supplied by the second respondent are declared counterfeit goods within the meaning of the Counterfeit Goods Act.
  • Goods offered for sale by first and second respondents bearing marks similar or deceptively or confusingly similar to the applicant's registered trade mark no 1999/06528 are declared counterfeit goods.