Valentino Globe BV v Phillips and Another (6/96) [1998] ZASCA 43; 1998 (3) SA 775 (SCA); [1998] 4 All SA 1 (A) (27 May 1998)

Valentino Globe BV v Phillips and Another (6/96) [1998] ZASCA 43; 1998 (3) SA 775 (SCA); [1998] 4 All SA 1 (A) (27 May 1998)

The Supreme Court of Appeal held that Phillips was not a 'person aggrieved' under section 36(1)(b) of the Trade Marks Act 62 of 1963. The evidence showed that Phillips had not traded or intended to trade under the mark Valentino in his personal capacity; any use of the mark was by separate legal entities, not by Phillips himself. The statutory framework did not permit piercing the corporate veil except in narrowly defined circumstances, which did not apply. The court concluded that Phillips could not succeed in his application for registration of the mark and therefore lacked locus standi to seek its removal. As a result, the application for removal should have failed at the first hurdle,...

Citation
[1998] ZASCA 43
Parties
Appellant: Valentino Globe B.V.; Respondent: Anthony Howard Phillips; Respondent: The Registrar of Trademarks
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
27 May 1998
Case Number
6/96
Procedural Posture
Civil Appeal / Appeal From Order of Removal of Trade Mark for Non Use
Outcome
Appeal upheld; order of removal set aside and application for removal dismissed with costs.
Judges
Harms, Hefer, Nienaber, Howie, Plewman
Legal Topics
Trade Mark Removal, Locus Standi, Corporate Veil, Registered User, Bad Faith Application
Intellectual Property Civil Procedure Trade Mark Removal Locus Standi Corporate Veil Registered User Bad Faith Application

Case Brief

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Parties

Valentino Globe B.V.

Appellant

Anthony Howard Phillips

Respondent

The Registrar of Trademarks

Respondent

Procedural Posture

Civil Appeal / Appeal From Order of Removal of Trade Mark for Non Use

Legal Issues

  1. 1 Whether Phillips was a 'person aggrieved' under section 36(1)(b) of the Trade Marks Act 62 of 1963 and thus had locus standi to apply for removal of the trade mark.
  2. 2 Whether use of the trade mark by entities controlled by Phillips constituted use by the applicant for purposes of resisting removal for non-use.
  3. 3 Whether the precedent in Adcock-Ingram Laboratories Ltd v SA Druggists Ltd and Another was correctly applied regarding use by non-proprietors.

Ratio Decidendi

The Supreme Court of Appeal held that Phillips was not a 'person aggrieved' under section 36(1)(b) of the Trade Marks Act 62 of 1963. The evidence showed that Phillips had not traded or intended to trade under the mark Valentino in his personal capacity; any use of the mark was by separate legal entities, not by Phillips himself. The statutory framework did not permit piercing the corporate veil except in narrowly defined circumstances, which did not apply. The court concluded that Phillips could not succeed in his application for registration of the mark and therefore lacked locus standi to seek its removal. As a result, the application for removal should have failed at the first hurdle,...

Court Disposition

Appeal upheld; order of removal set aside and application for removal 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.