.
Burrell TD Burrells South African Patent and Design Law 3ed Durban LexisNexis Butterworths 1999
Cases referred to in judgment
South Africa
AdcockIngram Products Ltd v Beecham SA (Pty) Ltd 1977 (2) SA 434 (W)
Referred to
290
Botha v White [2003] 2 All SA 362 (2004 (3) SA 184) (T) Referred to
289
Butterworths Publishers (Pty) Ltd v Jacobsens Group (Pty) Ltd and another
[2005] 2 All SA 588 (T) Referred to
290
Caterham Car Sales and Coachworks Ltd v Birkin Cars (Pty) Ltd [1998] 3
All SA 175 (1998 (3) SA 938) (SCA) Referred to
290
Glenton and Mitchell v Ceylon Tea Company 1918 WLD 118 Discussed
and Applied
287
Kellogg Co and another v Bokomo Cooperative Ltd 1997 (2) SA 725 (C)
Referred to
287
KimberlyClark of SA (Pty) Ltd (formerly Carlton Paper of SA (Pty) Ltd) v
Proctor and Gamble SA (Pty) Ltd [1998] 3 All SA 77 (1998 (4) SA 1) (SCA)
Compared
292
Moorgate Tobacco Co Ltd v Philip Morris Inc Referred to
290
Page 286 of [2010] 2 All SA 284 (SCA)
New Media Publishing (Pty) Ltd v Eating Out Webb Services CC
2005 (5) SA 388 (C) Referred to
289
Oils International (Pty) Ltd v Wm Penn Oils Ltd 1965 (3) SA 64 (T)
Referred to
290
Solmike (Pty) Ltd t/a Skipper's Cabin v West Street Trading Co (Pty) Ltd t/a
Skipper Bar [1981] 4 All SA 77 (1981 (4) SA 706) (D) Referred to and
Explained
288
South African Football Association v Stanton Woodrush (Pty) Ltd t/a Stan
Smidt and Sons and another [2003] 1 All SA 274 (2003 (3) SA 313) (SCA)
Referred to and Compared
289
United Kingdom
Daimler Chrysler AG v Javid Alavi t/a Merc [2001] RPC 813 823 Referred
to
291
Judgment
HARMS DP:
Introduction
[1] The appellant, Turbek Trading CC ("Turbek"), is the proprietor of two registered trade marks, both consisting
of the initials "KG". The one, TM 2000/03828, is registered in class 25 in relation to clothing, footwear and
headgear; and the other, TM 2000/13267, is a service mark in class 35. Turbek's controlling member is Mr
Kenneth Gordon, a shoe designer, and he used his initials "KG" as trade mark. Turbek deals exclusively in
footwear.
[2] Turbek filed its applications on 7 March 2000. At the time it sought registration for "KG Italia". In view of an
indication by the Registrar of Trade Marks that the mark would only be registered with a disclaimer or
limitation limiting its use to goods originating from Italy, Turbek amended its applications by deleting the word
"Italia" and thereby limiting the marks to "KG" simpliciter. The applications were accepted, duly advertised and
in the absence of opposition registered on 29 February 2005.
[3] Kurt Geiger has the same initials as Mr Gordon. Whether Kurt Geiger was or is a living person does not appear
from the papers but the name "Kurt Geiger" is a trade mark that has been used by the present respondent, A
& D Spitz Ltd ("Spitz"), for a number of years especially for footwear but also more generally in relation to
clothing. "Kurt Geiger" was registered in class 25 for boots, shoes and slippers on 17 December 1990.
[4] Spitz lays claim to the trade mark "KG", alleging that it had used the mark before the application date of
Turbek's trade marks. It, accordingly, approached the court below for an order for the expungement of these
registrations. In order to interdict Turbek from using the mark "KG", Spitz relied on trade mark infringement
and on passingoff. The court below upheld the application on all three grounds and issued appropriate
consequential orders. The appeal is with its leave.