South Africa Case Law

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

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

Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International (242/2003)

Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International (242/2003) [2004] ZASCA 76; [2004] 4 All SA 151 (SCA); 2005 (2) SA 46 (SCA); 2004 BIP 131 (SCA) (16 September 2004)

Court

Supreme Court of Appeal

Case number

242/2003

Judges

Harms, Streicher, Navsa, Mthiyane, Comrie

The Supreme Court of Appeal held that the appellant's use of a caricature of the respondent's well-known trade mark on T-shirts constituted infringement by dilution through tarnishment under s 34(1)(c) of the Trade Marks Act. The message conveyed by the T-shirts was found to be materially detrimental to the repute of the trade marks, creating an unwholesome and degrading association with SAB. The court rejected the appellant's reliance on freedom of expression, finding that the use was commercial and not a fair parody or justified socio-political commentary. The court emphasised that neither…

Source excerpt

• Trade Mark Infringement
• Dilution By Tarnishment
• Freedom Of Expression
• Trade Marks Act 194 Of 1993
• Parody Defence