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P Ginsburg SC and A De Vos SC instructed by Adams & Adams, Pretoria
For the respondent:
Savage Jooste & Adams, Pretoria

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Valentino Globe BV v Phillips and another [1998] 4 All SA 1 (A)

Case Law

Case Outcome

Dismissed
Other
Reversed Lower Court

Case Status: Closed

Keywords

Intellectual property
Trademark

Case Number: 6/96

Decision date: May 27, 1998

Country

South Africa

Judicial Body: Supreme (court of final appeal)

Court Name: Supreme Court of Appeal

Collection: CIPIT

Case 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 of1993 provide that if registered trademarks are not used for a continuous period of five years, they may be removed from the register. In the Court, a quo the trademark 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 Court considered whether the First Respondent was a person aggrieved by the registration of theAppellant's trademark. 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 the mark applied for by the Applicant was prima facie evidence of 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 FirstRespondent 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 trademark should have failed. The appeal was upheld with costs. The Court considered whether the First Respondent was a person aggrieved by the registration of theAppellant's trademark. 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 the mark applied for by the Applicant was prima facie evidence of 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 FirstRespondent 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 trademark should have failed. The appeal was upheld with costs.

Date Updated: Nov 4, 2019

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