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 406 (15 June 2022)

Court

North Gauteng High Court, Pretoria

Case number

47204/2021

Judge

Baqwa

The High Court dismissed leave to appeal, finding no reasonable prospects of success because the applicant had not shown locus standi or interest in the trade mark registrations.

• Trade Mark Rectification
• Locus Standi
• Leave To Appeal
• Costs Order
• Leave-to-appeal
• Trade-mark-rectification

Stable Brands (Pty) Ltd v LA Group (Pty) Ltd and Another (33268/18)

Stable Brands (Pty) Ltd v LA Group (Pty) Ltd and Another (33268/18) [2019] ZAGPPHC 568 (29 November 2019)

Court

North Gauteng High Court, Pretoria

Case number

33268/18

Judge

C J van der Westhuizen

The High Court added an order directing the Registrar of Trade Marks to rectify the register so the earlier judgment could be implemented.

• Trade Mark Rectification
• Trade Mark Register
• Court Order Amendment
• Trade-mark-rectification
• Trade-mark-register
• Judgment-amendment

Tritof Enterprise (SA) Proprietary Limited v Registrar of Trade Marks and Others (119/2016)

Tritof Enterprise (SA) Proprietary Limited v Registrar of Trade Marks and Others (119/2016) [2018] ZAGPPHC 261 (10 April 2018)

Court

North Gauteng High Court, Pretoria

Case number

119/2016

Judge

T M Makgoka

The High Court dismissed an application for leave to appeal in a trade mark rectification and expungement matter, finding no reasonable prospects of success.

• Trade Mark Rectification
• Expungement Application
• Leave To Appeal
• Reasonable Prospects Of Success
• Leave-to-appeal
• Trade-mark-rectification

Tekno-Medical Optik Chirurgie GmbH v Tekno Surgical And Medical (Pty) Limited and Others (69392/2013)

Tekno-Medical Optik Chirurgie GmbH v Tekno Surgical And Medical (Pty) Limited and Others (69392/2013) [2015] ZAGPPHC 394; 2015 BIP 273 (GP) (17 June 2015)

Court

North Gauteng High Court, Pretoria

Case number

69392/2013

Judge

C Pretorius

The High Court dismissed an application to join the correct trade mark proprietor in rectification proceedings, holding the wrong party had been cited.

• Joinder Of Parties
• Trade Mark Rectification
• Uniform Rules Rule 10
• Assignment Of Trade Mark
• Joinder-of-parties
• Trade-mark-rectification

Adcock Ingram Intellectual Property (Pty) Limited and Another v Cipla Medpro (Pty) Limited and Another (30763/2009)

Adcock Ingram Intellectual Property (Pty) Limited and Another v Cipla Medpro (Pty) Limited and Another (30763/2009) [2010] ZAGPPHC 249; 2010 BIP 225 (GNP) (23 December 2010)

Court

North Gauteng High Court, Pretoria

Case number

30763/2009

Judge

W R C Prinsloo

The court found that the applicants failed to discharge the onus of proving a likelihood of confusion or deception between the trade marks 'Zetomax' and 'Zemax'. The pharmaceutical market is tightly regulated, with products dispensed only by qualified professionals, and both products have coexisted for years without any reported confusion. The evidence presented by the respondent, including expert affidavits, demonstrated that similar prefixes and suffixes are common in pharmaceutical trade marks and that the distinctive element 'ZETO' is not present in 'Zemax'. Arguments regarding confusion…

Source excerpt

• Trade Mark Rectification
• Likelihood Of Confusion
• Pharmaceutical Products
• Onus Of Proof
• Generic Substitution

McDonald's International Property Co Ltd v Gianni and Another (A566/2006)

McDonald's International Property Co Ltd v Gianni and Another (A566/2006) [2007] ZAGPHC 226; 2007 BIP 231 (T) (4 October 2007)

Court

High Courts - Gauteng

Case number

A566/2006

Judges

Mynhardt, Murphy, Visser

The court found that the appellant failed to establish sufficient reputation in its Mc/Mac marks as at the relevant date, except for McDonald's itself. The evidence did not show use or reputation in relation to biscuits by the relevant date. The court rejected the application of the series principle under section 10(14), following Supreme Court of Appeal authority. Upon comparison, the court held that the respondent's McBiscuit mark is visually, aurally, and conceptually distinct from the appellant's marks, and that the common Mc/Mac prefix alone does not create a likelihood of confusion or d…

Source excerpt

• Trade Mark Rectification
• Likelihood Of Confusion
• Series Principle
• Expungement Of Mark
• Reputation In Trade Mark

Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another (573/97)

Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another (573/97) [2000] ZASCA 2; 2000 (2) SA 771 (SCA); [2000] 2 All SA 1 (A) (16 March 2000)

Court

Supreme Court of Appeal

Case number

573/97

Judges

Vivier, Harms, Marais, Streicher, Farlam

The Supreme Court of Appeal held that “Liquorice Allsorts” was generic/descriptive and ordered a disclaimer preventing exclusive trade mark rights in the term.

• Trade Mark Rectification
• Disclaimer Of Non Distinctive Elements
• Capability Of Distinguishing
• Generic Terms In Trade Marks
• Trade-mark-rectification
• Disclaimer-of-non-distinctive-elements

Danco Clothing (Pty) Ltd v Nu-Care Marketing and Sales Promotions (Pty) Ltd and Another (675/89)

Danco Clothing (Pty) Ltd v Nu-Care Marketing and Sales Promotions (Pty) Ltd and Another (675/89) [1991] ZASCA 121; 1991 (4) SA 850 (AD); (26 September 1991)

Court

Supreme Court of Appeal

Case number

675/89

Judges

Corbett, Botha, F H Grosskopf, Nienaber, Nicholas

The Supreme Court of Appeal held that the appellant had locus standi as a 'person aggrieved' under section 33(1) of the Trade Marks Act, both as a potential trade rival and as an applicant for registration whose application was blocked by the respondent's mark. The court found that the appellant demonstrated a reasonable possibility of expanding into cosmetics and that the trend of clothing brands entering the cosmetics market established a likelihood of confusion among the public. The evidence showed that the identical marks used in different classes, sold through overlapping trade channels,…

Source excerpt

• Trade Mark Rectification
• Likelihood Of Confusion
• Locus Standi
• Expungement Of Trade Mark
• Trade Mark Classes

Ritz Hotel Ltd v Charles of Ritz Ltd. and Another (17/1988)

Ritz Hotel Ltd v Charles of Ritz Ltd. and Another (17/1988) [1988] ZASCA 17; [1988] 2 All SA 292 (A) (21 March 1988)

Court

Supreme Court of Appeal

Case number

17/1988

Judges

Nicholas, Corbett, Hoexter, Smalberger, Nestadt

Trade mark rectification appeal where locus standi, non-use, permitted use, and confusion were disputed. The appeal failed and the cross-appeal succeeded.

• Trade Mark Rectification
• Bona Fide Use
• Registered User Control
• Likelihood Of Confusion
• Locus Standi
• Trade-mark-rectification