South Africa Case Law

3rd Level Marketing and Media Group (Pty) Ltd v South African Broadcasting Corporation Ltd (47204/2021)

3rd Level Marketing and Media Group (Pty) Ltd v South African Broadcasting Corporation Ltd (47204/2021) [2022] ZAGPPHC 130; [2022] HIPR 187 (GP) (2 March 2022)

Court

North Gauteng High Court, Pretoria

Case number

47204/2021

Judge

Selby Baqwa

The High Court dismissed a trademark removal application after finding the applicant failed to establish locus standi as an interested person.

• Trademark Expungement
• Locus Standi
• Bona Fide Use
• Trade Mark Registration
• Trademark-expungement
• Locus-standi

Morris Material Handling Limited v Morris Material Handling SA (Pty) Ltd (829/2017)

Morris Material Handling Limited v Morris Material Handling SA (Pty) Ltd (829/2017) [2018] ZASCA 67; 2018 BIP 278 (SCA) (25 May 2018)

Court

Supreme Court of Appeal

Case number

829/2017

Judges

Maya, Majiedt, Wallis, Dambuza, Van der Merwe

The Supreme Court of Appeal dismissed an appeal against expungement proceedings, holding that the appellant failed to prove bona fide use of the MORRIS trade mark.

• Trade Mark Expungement
• Non Use Of Trade Mark
• Bona Fide Use
• Onus Of Proof
• Trade Mark Registration
• Trade-mark-expungement

Westminster Tobacco (Pty) Ltd v Philip Morris Products S.A. and Others (925/2015)

Westminster Tobacco (Pty) Ltd v Philip Morris Products S.A. and Others (925/2015) [2017] ZASCA 10; [2017] 2 All SA 389 (SCA); 2017 BIP 74 (SCA) (16 March 2017)

Court

Supreme Court of Appeal

Case number

925/2015

Judges

Leach, Wallis, Petse, Zondi, Mbatha

The Supreme Court of Appeal held that Westminster Tobacco’s limited PARLIAMENT cigarette sales were bona fide trade mark use and dismissed expungement.

• Trade Mark Expungement
• Bona Fide Use
• Trade Marks Act 194 Of 1993
• Commercial Purpose
• Brand Strategy
• Trade-mark-expungement

Safika Holdings (Pty) Ltd v Safika Office for Automation (39786/2005)

Safika Holdings (Pty) Ltd v Safika Office for Automation (39786/2005) [2015] ZAGPPHC 859; 2016 BIP 116 (GP) (11 December 2015)

Court

North Gauteng High Court, Pretoria

Case number

39786/2005

Judge

R G Tolmay

The High Court granted interdictory relief to Safika Holdings, finding the respondent’s SAFIKA use infringed registered marks and that section 36 and delay defences failed.

• Trade Mark Infringement
• Section 34 Trade Marks Act
• Section 36 Trade Marks Act
• Delay In Prosecution
• Continuous Use
• Bona Fide Use

Philip Morris Products S.A. v Westminster Tobacco Co. (Cape Town and London) (Pty) Ltd and Another (2644/2014)

Philip Morris Products S.A. v Westminster Tobacco Co. (Cape Town and London) (Pty) Ltd and Another (2644/2014) [2015] ZAGPPHC 593; 2015 BIP 285 (GP) (6 August 2015)

Court

North Gauteng High Court, Pretoria

Case number

2644/2014

Judge

J W Louw

The court found that the respondent failed to prove bona fide use of the PARLIAMENT trade marks during the relevant five-year period. Although BATSA, as a subsidiary, manufactured and sold Parliament cigarettes and used promotional materials, the evidence showed that these activities were limited in duration and scope, and were primarily intended to disrupt competitors and protect BATSA's main brand, Peter Stuyvesant, rather than to establish Parliament as a commercially viable product in its own right. The launches were tactical and not aimed at genuine commercial trade in Parliament cigaret…

Source excerpt

• Trade Mark Expungement
• Bona Fide Use
• Permitted User
• Trade Marks Act
• Onus Of Proof

Pandora A/S v Truworths Ltd (72261/13)

Pandora A/S v Truworths Ltd (72261/13) [2015] ZAGPPHC 389; 2015 BIP 268 (GP) (3 June 2015)

Court

North Gauteng High Court, Pretoria

Case number

72261/13

Judge

D S Fourie

An expungement application failed because Truworths proved bona fide use of ESSENCE on Class 14 goods, including detachable jewellery sold with garments.

• Trade Mark Expungement
• Bona Fide Use
• Onus Of Proof
• Class 14 Goods
• Trade Mark Act Section 27
• Trade-mark-expungement

Impala Platinum Holdings Limited v Impala Warehousing And Logistics Africa (Proprietary) Limited and Another (2013/22608)

Impala Platinum Holdings Limited v Impala Warehousing And Logistics Africa (Proprietary) Limited and Another (2013/22608) [2014] ZAGPJHC 410; 2014 BIP 349 (GJ) (11 December 2014)

Court

South Gauteng High Court, Johannesburg

Case number

2013/22608

Judge

L J van Tonder

The High Court held that Implats failed to prove trade mark infringement or passing-off against a logistics business, and in part granted expungement of overbroad registrations.

• Trade Mark Infringement
• Expungement Of Trade Mark
• Likelihood Of Confusion
• Passing Off
• Nice Classification
• Bona Fide Use

CK3 LLC v Sun Mark Ltd and Another (28524/14)

CK3 LLC v Sun Mark Ltd and Another (28524/14) [2014] ZAGPPHC 921; 2014 BIP 283 (GP) (14 November 2014)

Court

North Gauteng High Court, Pretoria

Case number

28524/14

Judge

Basson

The court found that the respondent had not discharged the onus of proving bona fide use of the BULLDOG trade mark as required by section 27(1)(b) of the Trade Marks Act. The respondent's use commenced only after 36 years of non-use, coinciding with settlement negotiations and the applicant's pending registration. The sales were negligible, limited to a single outlet, and not supported by sufficient factual explanation. The court drew a negative inference from the timing and circumstances of the use, concluding that it was orchestrated to frustrate the applicant's registration rather than to…

Source excerpt

• Trade Mark Expungement
• Bona Fide Use
• Non Use Removal
• Onus Of Proof
• Judicial Discretion

Firstrand Bank Ltd v First Central Insurance Ltd and Another (21241/2012)

Firstrand Bank Ltd v First Central Insurance Ltd and Another (21241/2012) [2014] ZAGPPHC 69; 2014 BIP 137 (GP) (7 February 2014)

Court

North Gauteng High Court, Pretoria

Case number

21241/2012

Judge

D S Fourie

The High Court removed a trade mark registration after finding insufficient proof of bona fide use under section 27(1)(a) of the Trade Marks Act.

• Trade Mark Expungement
• Bona Fide Use
• Locus Standi
• Trade Marks Act 194 Of 1993
• Regulation 13 4 Compliance
• Trade-mark-removal

Gap Inc v Salt of the Earth Creations (Pty) Ltd and Others (695/11)

Gap Inc v Salt of the Earth Creations (Pty) Ltd and Others (695/11) [2012] ZASCA 68; 2012 (5) SA 259 (SCA); 2012 BIP 135 (SCA) (23 May 2012)

Court

Supreme Court of Appeal

Case number

695/11

Judges

Cloete, Ponnan, Malan, Wallis, Kroon

The Supreme Court of Appeal held that the appellant had established bona fide use of its registered trade mark in South Africa during the relevant period. The evidence showed that the appellant engaged in negotiations, placed orders, and made sales to South African retailers, including Clicks and Stuttafords, with the intention of introducing Gap branded personal care products into the South African market. The court found that the threshold for use is low and that even modest or intermittent use, if genuine and aimed at furthering trade, suffices to defeat an application for expungement. The…

Source excerpt

• Trade Mark Expungement
• Bona Fide Use
• Trade Marks Act 194 Of 1993
• Territorial Nature Of Trade Marks