representation, however, had been abandoned. In my view, abandonment of the possibility of a passingoff
action strongly indicates a recognition that no enforceable common law exclusive right existed.
[11] Before I can conclude my finding whether the respondent has the right to use the trade mark, I need to
satisfy myself that the respondent is in fact the successor in title of Falck Trading (Pty) Ltd. Counsels were
requested to file additional heads of argument dealing with the law in respect of successors or predecessors
in title in relation to juristic personalities. Indeed, they obliged and the Court is indebted to both Counsel for
the supplementary heads filed in that regard.
[12] The success of the respondent's defence in terms of section 36 depends upon whether it is able to prove that
it is to be regarded as the successor in the title of an entity that made bona fide use of the trade mark
INFINITY prior to the date of registration of the applicant's trademark. In support of its succession, the
respondent claims that Tyrecor Holdings (Pty) Ltd, a company which later changed its name to Falck Trading
(Pty) Ltd thereafter continued to do so for a period of approximately 2½ years and that Falck Trading's
business, namely that of selling tyres, was taken over by the respondent during March 2009. The respondent
bears the onus of proof in respect of the claimed prior use, either by itself or by its predecessor in title. It
insofar needs to discharge the burden of convincing this Court that it had acquired these rights from Falck
Trading.
[13] On behalf of the applicant, it is contended that the acquisition of the business of one company by another
must take place by means of a contract, one which would transfer the business from the one company to the
other. In response, the respondent contends that the absence of documentation relating to the transfer of
the business from Tyrecor Holdings (Pty) Ltd does not mean that it did not occur or moreover, that Tyrecor
Holdings was not a predecessor in title regarding the importation of INFINITY branded tyres.
[14] In adjudicating this issue in dispute, I have also considered the redacted minutes of a meeting of respondent
of 8 November 2007 (paragraph 15.2, page 146 of the infringement application) which reads under the
heading "shareholding" as follows:
"Falck Trading:
Falck Trading will be a property holding company and will import till Feb by which time Tyrecor licences will be sorted
out".
The respondent submits further that no formal documents or agreements exist regarding the takeover of the
business. Due to the common shareholding and directorship of the various companies, respondent contends:
"everything was done verbally . . . " (paragraph 15.3, page 147 of the infringement application.) I am
persuaded that there was a transfer or an assignment of rights and obligations between the predecessor
and successor in relation to the import and sale in INFINITY branded tyres . That the respondent appears not
to have a written contract in its possession or that relevant provisions of the Companies Act have not been
complied with, does not vitiate such a transfer of rights and the respondent faces sanctions embodied in the
Companies Act. However, it does not in my view affect the respondent's defence available in terms of section
36 of the Act.
[15] The upshot of my finding that the respondent had a right to use, and its predecessor in title, Falck Trading
(Pty) Ltd, had used the trade mark prior to the applicant seeking registration of the trade mark INFINITY, is
that the application for an interdict fails and the defence raised by section 36(1) of the Act succeeds with
costs.
"The Counter Application
Under Case No 16926A/2011
In the matter between
ETRACTION (PTY) LTD
Applicant
And
Page 95 of [2014] 2 All SA 90 (WCC)
TYRECOR (PTY) LTD
Respondent
In re: the counterapplication of
TYRECOR (PTY) LTD
Applicant
And
ETRACTION (PTY) LTD
First Respondent
THE REGISTRAR OF TRADE MARKS
Second Respondent."
[16] The respondent in the main application (which will continue to be referred to as the respondent) counter
applies for the partial expungement of the trade mark by the deletion of "tyres" from the applicant's
registration. The respondent argues that from 2006 the applicant was aware of its use of the trade mark in
respect of tyres and consequently when the applicant sought registration of the trade mark in the applicant's
name, it did not have a bona fide claim to proprietorship of the trade mark and had no bona fide intention of
using the trade mark in respect of the goods in respect of which it is registered. The respondent joined the
Registrar of Trade Marks as a respondent in its counterapplication as the Registrar would be required to alter
the registration of the trade mark if the counter application succeeded.
[17] The applicant, in opposing the application for partial expungement, asserts that it had the bona fide intention
of using the trade mark in relation to tyres and in amplification submits that when it filed its trademark
application to register the trademark INFINITY in class 12, it was contemplated that the sourcing and branding