Valentino Globe BV v Phillips and another
[1998] 4 All SA 1 (A)
Division:
Supreme Court of Appeal
Date:
27 May 1998
Case No:
6/96
Before:
Harms, Hefer, Nienaber, Howie and Plewman JJA
Sourced by:
Adv JJF Hefer and Adv I Potgieter
Summarised by:
L Bejai
. Editor's Summary . Cases Referred to . Judgment .
Trade Marks Removal on the grounds of nonuse The onus rests upon the Applicant for removal to establish that he is
a person aggrieved A wide and liberal interpretation is given to the term "person aggrieved" The Applicant must have a
substantial interest in the mark or must substantially be damaged by it remaining on the register The fact that the
registered mark constitutes an obstacle to the registration of a mark applied for by the Applicant is prima facie evidence of
an interest, but if the application for registration was in bad faith, vexatious or without any substance, the prima facie
inference is negated.
Editor's Summary
Section 36(1)(b) of the Trade Marks Act 62 of 1963 ("the Act") and section 27(1)(b) of the Trade Marks Act 194 of
1993 provide that if registered trade marks are not used for a continuous period of five years, they may be removed
from the register. In the Court a quo the trade mark under consideration, "Valentino" was removed from the register
on the ground of nonuse. The instant case was an appeal against this removal. As the proceedings were initiated
during 1980 the matter had to be decided in terms of the 1963 Act.
The Appellant had registered the trade mark "Valentino" on 28 November 1973 in relation to certain items of
clothing. The Appellant licensed certain continental concerns to manufacture readytowear Valentino clothing. No
user agreement had been registered under section 48 of the Act before the proceedings were launched, nor did
the Appellant itself conduct any business under the mark in South Africa.
The First Respondent dealt in men's clothing in Johannesburg. On 5 November 1979 he lodged in his own name
an application for the registration of the trade mark "Valentino" in respect of clothing. As the Appellant's registered
trade mark prevented the First Respondent's application being granted he launched an application in the court a
quo for the removal of the trade mark on the ground of nonuse.
In the court a quo the Appellant had argued two points in limine, viz (i) relating to the locus standi of the First
Respondent and (ii) the lack of proof of nonuse in the founding affidavit. The parties had agreed that if the
Appellant was unsuccessful on these points, the outcome of the application would be determined in accordance
with the full bench decision in AdcockIngram Laboratories Ltd v SA Druggists Ltd and another 1983 (2) SA 350 (T). This
judgment held, inter alia, that use of a trade mark by someone other than its proprietor or a registered user is not
"use" for the purposes of section 36(1)(b) and cannot protect a trade mark from removal on the ground of nonuse.
The Appellant's points in limine were dismissed and the trade mark was removed.
On appeal the Appellant raised two issues viz: (i) whether the First Respondent was a "person aggrieved" by
the registration of the mark as provided in section 36(1)(b) of the Act, and, consequently whether he had locus
standi to
Page 2 of [1998] 4 All SA 1 (A)
apply for the removal of the Appellant's trade mark, and (ii) the correctness of the AdcockIngram decision.
Held The Court considered whether the First Respondent was a person aggrieved by the registration of the
Appellant's trade mark. The Court held that the onus rests upon the Applicant for removal to establish, as a
reasonable possibility, that he is a person aggrieved. A wide and liberal interpretation was given to the term
"person aggrieved". The Applicant had to have a substantial interest in the mark or must substantially be damaged
by it remaining on the register. The fact that the registered mark constituted an obstacle to the registration of a
mark applied for by the Applicant was prima facie evidence of an interest, but if that application for registration was
in bad faith, vexatious or without any substance, the prima facie inference would be negated.
On the evidence in the instant case the court a quo should have found that there was no prospect that First
Respondent could succeed in his application for the registration of the trademark "Valentino". The First Respondent
was not an "aggrieved" person and his application for the removal of the Appellant's trade mark should have failed.
The appeal was upheld with costs.
Notes
For Trade marks, see LAWSA (Vol 29, paragraphs 1276)
Cases referred to in judgment