Lubbe NO and others v Millennium Style (Pty) Ltd and others; In re Lubbe NO and others v Millenium Style
(Pty) Ltd
[2007] 4 All SA 692 (SCA)
Division:
Supreme Court of Appeal
Date:
16 March 2007
Case Number:
69/06
Before:
LTC Harms ADP, FDJ Brand, TD Cloete, VM Ponnan and A Cachalia
JJA
Sourced by:
PR Cronjé
Summarised by:
D Harris
Parallel Citation:
2007 (6) SA 241 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
Intellectual property law Trade marks Appeal against expungement of trade marks from register Court emphasising
difference between a device which may be applied into a shoe sole (and which would be capable of registration) and a
design of a shoe sole (which cannot be registered).
Editor's Summary
The appellants were trustees in a trust which owned six trade marks which it alleged had been infringed by the
respondents. The court a quo dismissed the appellants' application for an interdict, and in response to a counter
application before it, granted the expungement of the trade marks. The appellants appealed against the lower
court's ruling.
Held The Court began by referring to the practice of "squatting" on the trade marks register. This was what it
considered the trust to have been doing. The trust was not using the trade mark register for its intended purpose,
but to stifle competition. The Court expressed its disapproval of such conduct, stating that it was contrary to the
purpose of intellectual property law.
In challenging the validity of the trade marks, the respondents contended that insofar as the marks sought to
register the shape and configuration of a shoe sole, they fell foul of the Trade Marks Act 62 of 1963. The appellants
responded by arguing that the sole was a "device" and was therefore capable of registration. The Court highlighted
the difference between a device which may be applied into a shoe sole (and which would be capable of registration)
and a design of a shoe sole (which cannot be registered). It rejected the appellants' contention that the sole was a
device. Finding that the marks were not registrable under the Trade Marks Act 62 of 1963, the Court agreed that
they had to be expunged.
The appeal was dismissed with costs.
Notes
For Trademarks see:
· LAWSA First Reissue (Vol 29, paras 1306)
Cases referred to in judgment
AdidasSalomon AG v Fitnessworld Trading Ltd Case C408/01 (ECJ)
695
Bergkelder Bpk v Vredendal Koöp Wynmakery [2006] 4 All SA 215 (SCA);
[2006] SCA 8 (RSA)
695
Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd
[2000] FCA 876
694
Mars Inc v Candy World (Pty) Ltd 1991 (1) SA 567 (A)
695
Page 693 of [2007] 4 All SA 692 (SCA)
Ritz Hotel Ltd v Charles of the Ritz Ltd 1988 (3) SA 290 (A)
695
WeberStephen Products Co v Registrar of Trade Marks 1994 (3) SA 611 (T)
694
View Parallel Citation
Judgment
HARMS ADP:
[1] This is a trade mark case. Msimang J, sitting in the High Court, dismissed an application for an interdict based