use the trade mark in respect of goods which as a matter of law are regarded as having their origin in
him/her/it. This is because the definition of a trade mark in section 2(1) of the Act requires the person to use
the trade mark to distinguish the goods in relation to which it is used or proposed to be used ". . . from the
same kind of goods . . . connected in the course of trade with any other person [other than the user]".
[22] There are three forms of trade mark use: affixation to goods, placement of trademarked goods on the market
and advertisement of trademarked goods. The relevant use for the establishment of origin is affixation since
the affixation of the trade mark creates trademarked goods, as a result of which all subsequent users indicate
origin in the trade mark proprietor. The applicant did not affix the trade mark INFINITY to any goods: it also
imported the INFINITY trademarked goods. This is additional proof that the applicant did not intend using the
mark on its own goods. Naturally a trade mark proprietor need not personally affix the trade mark to the
goods, but the affixation must be done at his/her/its behest or with his/her/its consent for the goods to have
their origin in the trade mark proprietor.
[23] A factor which indicates that the applicant was not bona fide in its application for registration is the fact that it
applied for registration knowing of the respondent's right to use the trade mark. A trader who applies for
registration of a trade mark knowing of another person's rights does not act bona fide: the Sidewalk Cafes (Pty)
Ltd t/a Diggers Grill v Diggers Steakhouse (Pty) Ltd and another 1990 (1) SA 192 (T). In this case, the defendant,
which I shall call Steakhouse, claimed the exclusive right to the trade mark DIGGERS GRILL for the whole of SA,
despite its manager actually knowing that Sidewalk Café's was operating a restaurant under that name in
Natal (as it then was): this was held not to be bona fide claim. The Court found that respondent was not
entitled to claim exclusive proprietorship in the whole country and to obtain exclusive rights to the trade mark
thereby depriving applicant of his vested rights in the trade mark.
Page 98 of [2014] 2 All SA 90 (WCC)
[24] The parallels between Wechsler's actions in the Everglide case and the applicant's are clear: the applicant
used the trade mark in respect of the goods which it had imported, not goods to which the trade mark
INFINITY had been affixed at its (the applicant's) behest. The applicant, therefore, used the trade mark to
indicate origin in the person who trademarked the goods. There are also clear parallels between the conduct
of Steakhouse in the Digger's Grill case and the applicant in the present case: the applicant was aware that
the respondent was using the trade mark to an increasing degree when it applied for registration of the trade
mark.
[25] The applicant's conduct in adopting the trade mark when it did not have a bona fide claim to proprietorship of
the trade mark INFINITY at the time of its application for registration, because it was aware of the
respondent's use of the trade mark, and what I find as the absence of an intention on its part to use the
trade mark INFINITY in relation to its goods, results in its application being completely vitiated. The counter
application succeeds, with costs, and the Registrar is directed in terms of section 24(1) of the Act, to expunge
the word "tyres" (spelt "tires") from the applicant's trade mark registration.
For the applicant:
Mr Seale
For the respondent:
Mr Micau