South Africa Case Law

Roselt and Another v Bouwa Machinery South Africa (Pty) Ltd and Another (29672/2021 ; 30201/21)

Roselt and Another v Bouwa Machinery South Africa (Pty) Ltd and Another (29672/2021 ; 30201/21) [2023] ZAGPJHC 576; 2023 BIP 4 (GJ) (25 May 2023)

Court

South Gauteng High Court, Johannesburg

Case number

29672/2021 ; 30201/21

Judge

Wepener

The High Court confirmed BOUWA trade mark registrations, interdicted the respondents from using the mark, and dismissed claims of oral assignment and expungement.

• Trade Mark Registration
• Trade Mark Infringement
• Expungement Of Trade Mark
• Assignment Of Trade Mark
• Passing Off
• Oral Agreement

Pepkor Retail (Proprietary) Limited v Truworths Limited (900/2015)

Pepkor Retail (Proprietary) Limited v Truworths Limited (900/2015) [2016] ZASCA 146; 2016 BIP 286 (SCA) (30 September 2016)

Court

Supreme Court of Appeal

Case number

900/2015

Judges

Navsa, Cachalia, Zondi, Mathopo, Van der Merwe

The court held that THE LOOK was descriptive in fashion retail, lacked distinctiveness, and should be removed from the trade mark register.

• Trade Mark Registration
• Distinctiveness
• Expungement Of Trade Mark
• Trade Mark Infringement
• Passing Off
• Retail Fashion Industry

Etraction (Pty) Ltd v Tyrecor (Pty) Ltd (28/5/2015)

Etraction (Pty) Ltd v Tyrecor (Pty) Ltd (28/5/2015) [2015] ZASCA 78; 2015 BIP 253 (SCA) (28 May 2015)

Court

Supreme Court of Appeal

Case number

20185/2014

Judges

Mpati, Brand, Wallis, Saldulker, Mayat

The SCA held that Tyrecor’s predecessor had continuous bona fide prior use of the INFINITY mark for tyres, defeating infringement, and upheld expungement of “tires”.

• Trade Mark Infringement
• Prior Bona Fide Use
• Expungement Of Trade Mark
• Passing Off
• Goodwill
• Registration Ulterior Motive

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

Discovery Holdings Ltd v Sanlam Ltd and Others (8995/2012)

Discovery Holdings Ltd v Sanlam Ltd and Others (8995/2012) [2014] ZAWCHC 109; 2015 (1) SA 365 (WCC); 2014 BIP 210 (WCC) (3 July 2014)

Court

Western Cape High Court, Cape Town

Case number

8995/2012

Judge

P L Goliath

The court held that ESCALATOR FUNDS is descriptive of CPPI investment products, rejected infringement and passing off claims, and ordered the mark expunged.

• Trade Mark Infringement
• Descriptive Marks
• Secondary Meaning
• Passing Off
• Expungement Of Trade Mark
• Distinctiveness

Mettenheimer v Zonquasdrif Vineyards CC and Another (18998/2010)

Mettenheimer v Zonquasdrif Vineyards CC and Another (18998/2010) [2012] ZAWCHC 69 (13 June 2012)

Court

Western Cape High Court, Cape Town

Case number

18998/2010

Judge

D M Davis

The court found that the applicants failed to establish that the use of Zonquasdrif Vineyards by the first respondent in relation to grape farming was likely to cause deception or confusion with the registered Zonquasdrift trade mark for wine and alcoholic beverages. The goods and trade channels were sufficiently distinct: grapes are sold to cooperative cellars, not the general public, and wine is sold to end consumers, often abroad. The evidence of actual confusion was vague and insufficient. The geographical nature of the name Zonquasdrift further diminished the likelihood of confusion, as…

Source excerpt

• Trade Mark Infringement
• Likelihood Of Confusion
• Geographical Indication
• Expungement Of Trade Mark
• Close Corporation Name Objection

Royal Salt Company (Pty) Ltd v Swartkops Sea Salt (Pty) Ltd and Another (2024/2010)

Royal Salt Company (Pty) Ltd v Swartkops Sea Salt (Pty) Ltd and Another (2024/2010) [2011] ZAECGHC 79; 2011 BIP 260 (ECG) (15 December 2011)

Court

Eastern Cape High Court, Grahamstown

Case number

2024/2010

Judge

M Makaula

The court found that the respondent’s SEESO product, in its packaging and presentation, is confusingly similar to the applicant’s SEEPO product. Both marks are dominant features in bold orange script on transparent packaging, and the only difference is a single letter. The use of the ® symbol with SEESO further bolsters its prominence and creates confusion. The respondent’s defence under Section 34(2)(g) fails because the mark was not used in the registered form. The applicant established reputation and goodwill in the Western Cape, and the similarities in get-up and mark are likely to deceiv…

Source excerpt

• Trade Mark Infringement
• Passing Off
• Expungement Of Trade Mark
• Likelihood Of Confusion
• Get Up Similarity

Strydom v Bader and Others (9830/2010)

Strydom v Bader and Others (9830/2010) [2010] ZAWCHC 223; 2010 BIP 192 (WCC) (26 October 2010)

Court

Western Cape High Court, Cape Town

Case number

9830/2010

Judge

Blignault

High Court trade mark case on infringement, prior use, and expungement. The applicant succeeded on infringement; respondents failed to prove bona fide prior use.

• Trade Mark Infringement
• Bona Fide Claim To Proprietorship
• Expungement Of Trade Mark
• Honest Concurrent User
• Mala Fide Registration
• Trade-mark-infringement

On-line Lottery Services (Pty) Ltd v National Lotteries Board and Another (536/2008)

On-line Lottery Services (Pty) Ltd v National Lotteries Board and Another (536/2008) [2009] ZASCA 86; [2009] 4 All SA 470 (SCA); 2010 (5) SA 349 (SCA); 2009 BIP 172 (SCA) (7 September 2009)

Court

Supreme Court of Appeal

Case number

536/2008

Judges

Harms, Brand, Heher, Ponnan, Tshiqi

The Supreme Court of Appeal held that LOTTO was generic and not registrable for the pleaded services, and found no passing off or Lotteries Act breach by On-Line.

• Trade Mark Registrability
• Distinctiveness
• Passing Off
• Expungement Of Trade Mark
• Unlawful Competition
• Trade-mark-registrability

Thabana Li Meli (Pty) Ltd v Thabani Wine (Pty) Ltd and Another (A552/2008)

Thabana Li Meli (Pty) Ltd v Thabani Wine (Pty) Ltd and Another (A552/2008) [2009] ZAWCHC 142 (28 August 2009)

Court

Western Cape High Court, Cape Town

Case number

A552/2008

Judges

Allie, Blignault, Erasmus

South African High Court appeal on trade mark infringement, expungement and acquiescence. The appeal failed, and the interdict was limited to Class 33.

• Trade Mark Infringement
• Expungement Of Trade Mark
• Proprietorship Of Trade Mark
• Likelihood Of Confusion
• Trade-mark-infringement
• Trade-mark-expungement