South Africa Case Law

United States Polo Association v LA Group (Pty) Ltd and Another (48200/18)

United States Polo Association v LA Group (Pty) Ltd and Another (48200/18) [2023] ZAGPPHC 1139 (28 August 2023)

Court

North Gauteng High Court, Pretoria

Case number

48200/18

Judge

P A Van Niekerk

The court found that paragraph 5.1.7 of the Kabini affidavit, when read in context with the Supreme Court of Appeal judgment, refers directly to an 'agreement' or 'valid compromise' between LA Group and Ralph Lauren. The SCA judgment itself refers to such an agreement, and it is highly improbable that such a compromise between major parties would not be reduced to writing. LA Group did not deny the existence of a written agreement. The reference in the affidavit, together with the SCA judgment, satisfies the requirement of a reference to a document under Rule 35(12). Furthermore, the agreemen…

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• Discovery Of Documents
• Trade Mark Opposition
• Trade Mark Cancellation
• Rule 35 12
• Relevance Of Evidence

Dart Industries Incorporated and Another v Botle Buhle Brands (Pty) Ltd and Another (636/2021)

Dart Industries Incorporated and Another v Botle Buhle Brands (Pty) Ltd and Another (636/2021) [2022] ZASCA 170; [2023] 1 All SA 299 (SCA); 2023 (4) SA 48 (SCA) (1 December 2022)

Court

Supreme Court of Appeal

Case number

636/2021

Judges

Dambuza, Makgoka, Gorven, Goosen, Masipa

The Supreme Court of Appeal held that the Eco bottle's shape was not inherently distinctive, as similar shapes existed in the market and consumers would not perceive the shape alone as a badge of origin. There was no evidence that the shape had acquired distinctiveness through prior use, as Tupperware always marketed the bottle in conjunction with its well-known trade mark, not the shape itself. The mark therefore failed both the inherent and acquired distinctiveness tests, justifying cancellation under s 10(2)(a) of the Trade Marks Act. However, the court found that Tupperware had establishe…

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• Trade Mark Distinctiveness
• Shape Marks
• Passing Off
• Trade Mark Cancellation
• Likelihood Of Confusion

Takis Biltong (Pty) Ltd v Grupo Bimbo S.A.B DE C.V (A393/2018)

Takis Biltong (Pty) Ltd v Grupo Bimbo S.A.B DE C.V (A393/2018) [2021] ZAGPPHC 837; 2021 BIP 12 (GP); [2021] HIPR 182 (GP) (10 December 2021)

Court

North Gauteng High Court, Pretoria

Case number

A393/2018

Judges

N Davis, B Nemavhidi

The High Court upheld an appeal in a trade mark dispute, finding TAKIS FUEGO deceptively similar to TAKIS and cancelling the respondent’s class 30 application.

• Trade Mark Cancellation
• Likelihood Of Confusion
• Reputation In Trade Mark
• Similar Goods
• Trade Mark Infringement
• Visual And Phonetic Similarity