South Africa Case Law

Bayerische Motoren Werker Aktiengesellschaft v Grandmark International (Pty) Ltd and Another (722/12)

Bayerische Motoren Werker Aktiengesellschaft v Grandmark International (Pty) Ltd and Another (722/12) [2013] ZASCA 114; 2014 (1) SA 323 (SCA); 2013 BIP 427 (SCA) (18 September 2013)

Court

Supreme Court of Appeal

Case number

722/12

Judges

Brand, Nugent, Cachalia, Wallis, Swain

The Supreme Court of Appeal held that BMW’s replacement car-part designs were functional, not aesthetic, and that use of “BM” on packaging was descriptive, not infringing.

• Registered Designs
• Aesthetic Vs Functional Designs
• Trade Mark Infringement
• Descriptive Use
• Spare Parts Exception
• Registered-designs

Reckitt Benckiser SA (Pty) Ltd v Adcock Ingram Healthcare (Pty) Ltd (15717/04)

Reckitt Benckiser SA (Pty) Ltd v Adcock Ingram Healthcare (Pty) Ltd (15717/04) [2005] ZAGPHC 27; 2005 BIP 114 (T) (11 March 2005)

Court

High Courts - Gauteng

Case number

15717/04

Judge

E Bertelsmann

The court found that while the applicant's trade mark 'WILD FLOWERS' was validly registered under the old Act and its original entry cannot be attacked, the mark is purely descriptive in relation to air fresheners and lacks distinctiveness. Both parties use the term to describe the scent and qualities of their products, and the evidence shows it is a common descriptive term in the trade. The respondent's use was bona fide and not intended to usurp goodwill. Under section 10(2) of the 1993 Act, the mark is not capable of distinguishing the applicant's goods from others and is wrongly remaining…

Source excerpt

• Trade Mark Expungement
• Distinctiveness
• Descriptive Use
• Trade Mark Infringement
• Bona Fide Description
• Costs Award