Victoria's Secret Inc v Edgars Stores Ltd. (428/92) [1994] ZASCA 43; 1994 (3) SA 739 (AD); [1994] 4 All SA 307 (AD) (28 March 1994)

Victoria's Secret Inc v Edgars Stores Ltd. (428/92) [1994] ZASCA 43; 1994 (3) SA 739 (AD); [1994] 4 All SA 307 (AD) (28 March 1994)

The Supreme Court of Appeal held that trade mark proprietorship in South Africa is determined by appropriation and use or proposed use within the country, not by foreign registration or reputation. Edgars was the first to file for registration and demonstrated a definite intention to use the mark in South Africa before Victoria's Secret Inc had any presence, reputation, or pending application in the country. The evidence did not establish that VS Inc had used or proposed to use the mark in South Africa prior to Edgars' application, nor that VS Inc had a reputation in South Africa at the relevant date. Allegations of copying and unfair competition were not sufficient to vitiate Edgars'...

Citation
[1994] ZASCA 43
Parties
Appellant: Victoria's Secret Inc; Respondent: Edgars Stores Ltd.
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
28 March 1994
Case Number
428/92
Procedural Posture
Civil Appeal / Appeal From Decision of Assistant Registrar of Trade Marks
Outcome
Appeal dismissed with costs, including costs of two counsel.
Judges
CORBETT, E M GROSSKOPF, GOLDSTONE, HARMS, NICHOLAS
Legal Topics
Trade Mark Proprietorship, Territoriality of Trade Marks, Passing Off, Well Known Marks, Paris Convention, Registration Priority
Intellectual Property Commercial and Corporate Trade Mark Proprietorship Territoriality of Trade Marks Passing Off Well Known Marks Paris Convention Registration Priority

Case Brief

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Parties

Victoria's Secret Inc

Appellant

Edgars Stores Ltd.

Respondent

Procedural Posture

Civil Appeal / Appeal From Decision of Assistant Registrar of Trade Marks

Legal Issues

  1. 1 Whether Edgars or Victoria's Secret Inc is entitled to registration of the trade mark 'Victoria's Secret' in South Africa.
  2. 2 Whether prior use or intention to use in South Africa determines proprietorship under the Trade Marks Act 62 of 1963.
  3. 3 Whether Edgars' adoption of the mark constitutes unfair competition or is vitiated by copying.

Ratio Decidendi

The Supreme Court of Appeal held that trade mark proprietorship in South Africa is determined by appropriation and use or proposed use within the country, not by foreign registration or reputation. Edgars was the first to file for registration and demonstrated a definite intention to use the mark in South Africa before Victoria's Secret Inc had any presence, reputation, or pending application in the country. The evidence did not establish that VS Inc had used or proposed to use the mark in South Africa prior to Edgars' application, nor that VS Inc had a reputation in South Africa at the relevant date. Allegations of copying and unfair competition were not sufficient to vitiate Edgars'...

Court Disposition

Appeal dismissed with costs, including costs of two counsel.

Orders

  • The appeal is dismissed.
  • Victoria's Secret Inc is ordered to pay the costs of the appeal, including the costs of two counsel.