Etraction (Pty) Ltd v Tyrecor (Pty) Ltd
 2 All SA 90 (WCC)
WESTERN CAPE HIGH COURT, CAPE TOWN
5 February 2014
HJ FABRICIUS J
Adv C Webster SC and G Kay
. Editor's Summary . Cases Referred to . Judgment .
 Intellectual property Trade marks Alleged infringement Expungement Applicant's conduct in adopting the trade
mark when it did not have a bona fide claim to proprietorship of the trade mark at the time of its application for
registration, and the absence of an intention on its part to use the trade mark in relation to its goods, resulted in its
application being completely vitiated.
 Intellectual property Trade marks Alleged infringement Requirements for obtaining a final interdict A clear right,
no other satisfactory remedy and proof of irreparable harm if the interdict is not granted Trade Marks Act 194 of 1993
Section 34(1)(a) Must be use of the identical or a confusingly similar mark, in the course of trade, in respect of identical
goods in relation to which the trade mark is registered.
The applicant sought an interdict restraining the respondent from infringing its trade mark. The respondent made a
counterapplication for partial expungement of the trade mark in respect of tyres.
Held The requirements for obtaining a final interdict are a clear right, no other satisfactory remedy and proof of
irreparable harm if the interdict is not granted. For there to be infringement in terms of section 34(1)(a) there must
be use of the identical or a confusingly similar mark, in the course of trade, in respect of identical goods in relation
to which the trade mark is registered. It is also clear that if there is use of the identical mark in respect of identical
goods, the question of likelihood of deception or confusion need not be proved but is presumed.
It was common cause that the respondent was using the applicant's trade mark. Its defence was that section
36(1) of the Trade Marks Act 94 of 1993 barred the applicant from instituting infringement proceedings against the
respondent, as its predecessor had commenced using the trade mark prior to the applicant applying for registration
of the mark. The success of the respondent's defence in terms of section 36 depended upon whether it was able to
prove that it was to be regarded as the successor in the title of an entity that made bona fide use of the trade mark
prior to the date of registration of the applicant's trademark. The respondent bore the onus of proof in respect of
the claimed prior use. Finding that onus to have been discharged, the Court dismissed the application for an
Turning to the respondent's application for expungement, the Court noted that when the applicant applied for
registration of the trade mark, it was aware of the respondent's prior use thereof. The applicant's conduct in
adopting the trade mark when it did not have a bona fide claim to proprietorship of the trade mark at the time of its
application for registration, and the absence of an intention on its part to use the trade mark in relation to its
goods, resulted in its application being completely vitiated. The counterapplication succeeded.
Page 91 of  2 All SA 90 (WCC)
For Intellectual property see:
LAWSA Second Edition Replacement Volume Vol 29
Burrell TD Burrells South African Patent and Design Law 3ed Durban LexisNexis 1999
Cases referred to in judgment
Broadway Pen Corporation and another v Wechsler and Co (Pty) Ltd and
others  4 All SA 475 (1963 (4) SA 434) (T) Discussed and Followed
Frank & Hirsch (Pty) Ltd v Roopanand Bros  3 All SA 122
(1987 (3) SA 165) (D) Referred to
PlasconEvans Paints Limited v Van Riebeeck Paints (Pty) Ltd  2 All SA
366 (1984 (3) SA 623) (A) Referred to
Protective Mining & Industrial Equipment Systems (Pty) Ltd (formerly Hampo
Systems (Pty) Ltd) v Audiolens (Cape) (Pty) Ltd  2 All SA 173
(1987 (2) SA 961) (A) Referred to