Turbek Trading CC v A and D Spitz Ltd and another
[2010] 2 All SA 284 (SCA)
Division:
SUPREME COURT OF APPEAL
Date:
27 November 2009
Case No:
565/08
Before:
LTC HARMS DP, CH LEWIS, NZ MHLANTLA, VM PONNAN JJA and NV
HURT AJA
Sourced by:
A Street
Summarised by:
DPC Harris
. Editor's Summary . Cases Referred to . Judgment .
[1] Intellectual property law Trade marks Application for expungement based on existence of prior right in mark
Where trade mark was not used in the form alleged by applicant, no prior right was established.
[2] Intellectual property law Trade marks Passing off A party who wishes to prevent another party from using the
latter's registered trade mark, has to establish a ground for revocation.
[3] Intellectual property law Trade marks Trade Marks Act 194 of 1993 Section 10(16) A mark may not be
registered as a trade mark or, if registered, is liable to be removed from the register if the registration of that mark is
contrary to existing rights of the person who filed a later application for registration of the same or similar mark.
Editor's Summary
The appellant was a close corporation whose controlling member, a Mr Kenneth Gordon, was a shoe designer who
used his initials "KG" as his trade mark. "Kurt Geiger" was a trade mark used by the respondent in respect of
footwear. That trade mark was registered in December 1990, whilst that of the appellant was registered in
February 2005.
The respondent laid claim to the trade mark "KG", alleging that it had used the mark before the application date
of the appellant's trade marks. It, accordingly, approached the court below for an order for the expungement of the
registrations. In order to interdict the appellant from using the mark "KG", the respondent relied on trade mark
infringement and on passingoff. The court below upheld the application on all three grounds, leading to the
present appeal.
In the expungement claim, the respondent's case was that it had used the trade mark for some years before the
appellant applied for registration of its mark, and that it, accordingly, had a prior right to the mark. The appellant
argued that the registrations were liable to be revoked under section 10(16) of the Trade Marks Act 194 of 1993,
which provides that a mark may not be registered as a trade mark or, if registered, is liable to be removed from the
register if the registration of that mark is contrary to existing rights of the person who filed a later application for
registration of the same or similar mark.
The trade mark infringement claim was based on two premises. The first related to the likelihood of deception and
confusion, and the second was that the use of any identical or confusingly similar registered trade mark cannot
infringe another registered mark.
Page 285 of [2010] 2 All SA 284 (SCA)
In the passingoff claim, the respondent contended that it could rely on passingoff to prevent the appellant from
using the "KG" trade mark even if it were unable to have the trade marks expunged.
Held The first case to deal with passing off was that of Glenton and Mitchell v Ceylon Tea Company 1918 WLD 118.
Having found that the applicant had established a prior reputation in the mark as registered, the Court concluded
that if a prima facie case was made out that the mark should not have been on the register, an interim interdict
could issue. In other words, registration is not a defence to a passingoff claim if the claimant for interim relief is
able to show that the register ought to be rectified by the removal of the registration. The present Court supported
that conclusion and held that a party who wishes to prevent another party from using the latter's registered trade
mark, has to establish a ground for revocation.
The real issue between the parties was whether the respondent had, as at the date of the appellant's
applications for registration, an existing right in the trade mark "KG" in class 25 for purposes of section 10(16) of
the Act. During argument, the respondent conceded that it did not brand its footwear as "KG", using instead, the
full "Kurt Geiger" name in combination with the initials "KG". The Court, therefore, concluded that the scale and
nature of the conjunctive use was such that no separate and distinct reputation arose in relation to "KG" simpliciter.
The appeal was, accordingly, upheld and the respondent's application in the lower court dismissed in its entirety.
Notes
For Intellectual property see:
.
LAWSA First reissue Vol 29