prove its prior reputation in the mark something unnecessary and even irrelevant in most trade mark
infringement cases.
Page 289 of [2010] 2 All SA 284 (SCA)
[12] I do not understand the provision to mean that a commonlaw mark may, without more, trump a registered
mark. It is often said that intellectual property rights are negative rights meaning that they do not give the
holder a right to do something but only a right to prevent others from doing so. It is not necessary to debate
the correctness of the theory in the present context because trade marks are granted on the understanding
that they will be used. This flows not only from the definition of a trade mark but also from the fact that they
are subject to revocation on the ground of nonuse (see South African Football Association v Stanton Woodrush
(Pty) Ltd t/a Stan Smidt and Sons and another 2003 (3) SA 313 (SCA); [2003] 1 All SA 274 (SCA) at paragraph
[14]). And there is also section 34(2)(g) which states that a registered trade mark is not infringed by the use
of any identical or confusingly or deceptively similar trade mark which is registered. It appears to me to be
anomalous to have a situation that a registered mark may not be trumped by another registered mark but
that it may by an unregistered mark.
[13] The position in my judgement is that if party A wishes to prevent party B from using B's registered trade mark,
party A has to establish a ground for revocation. In interim proceedings, this need only be done on a prima
facie basis and the approach in Glenton and Mitchell (supra) should be followed. In proceedings for final relief,
the ground has to be established on a balance of probabilities and for the sake of good order the relief
sought should include as a precondition the removal (or limitation) of the registered mark. It is in this sense
that a registered trade mark is not an "absolute defence" to a passingoff claim.
[14] In any event, I have difficulty in understanding the point that Spitz sought to make. As I have indicated, its
case for removal of the trade marks from the register was premised on the supposition that it had a prior
reputation in "KG". Should Spitz be unable to establish this, I fail to see how it could establish the same fact in
a passingoff context.
Turbek's delay defence
[15] Turbek's first line of defence was a reliance on what counsel referred to as an "equitable defence" of delay: if
a party delays in enforcing its rights the party may in the discretion of the court either forfeit the rights or be
precluded from enforcing them. The factual basis of the defence was, briefly put, that Spitz had known since 1
October 2001 of Turbek's trade mark applications and its use of the mark "KG" on footwear but only took
steps to enforce its alleged commonlaw rights when it instituted the present proceedings during July 2007.
This delay, according to the submission, amounted to acquiescence which disentitled Spitz from attacking the
registrations or obtaining an interdict. Counsel relied on a statement by Patel J that our law recognises a
defence of acquiescence distinct from estoppel and that the doctrine can be applied to halt cases where
necessary to attain just and equitable results (Botha v White 2004 (3) SA 184 (T) [also reported at [2003] 2 All
SA 362 (T) Ed] at paragraphs [24] and [31]). That Patel J had failed to take account of binding authority that
contradicted his bald statement and that he had misread authority on which he sought to rely was pointed
out by Thring J in New Media Publishing (Pty) Ltd v Eating Out Webb Services CC 2005 (5) SA 388 (C) at
Page 290 of [2010] 2 All SA 284 (SCA)
406I407J. During argument it became clear that counsel was unable to contend more than that delay may in
a suitable case be evidence of an intention to waive, evidence of a misrepresentation that might found
estoppel, or evidence of consent for purposes of the volenti non fit injuria principle. In other words, counsel
was unable to substantiate his submission that acquiescence is a substantive defence in our law. Delay, in
the context of trade mark law, may provide evidence of a loss of goodwill or distinctiveness but that was not
Turbek's case on the papers. All this does not mean that delay may not have procedural consequences; for
instance, it may be a factor to take into account in exercising a court's discretion to refuse to issue a
declaration of rights or an interim interdict or, maybe, even a final interdict, leaving the claimant to pursue
other remedies such as damages. Maybe this was what Patel J had in mind. If not, he erred.
The section 10(16) attack: Did Spitz have an existing right?
[16] Against this background, I proceed to consider the real issue between the parties and that is whether Spitz
had, as at 7 March 2000 (the date of Turbek's applications), an existing right in the trade mark "KG" in class
25 for purposes of section 10(16) of the Act. There was no attempt in either the papers or argument to
establish a right in class 35 and I shall leave it aside.
[17] In context, the question is whether the mark "KG" formed part of Spitz's goodwill. Spitz had to show that it
was at the date the commonlaw proprietor of the "KG" trade mark, and this required proof that Spitz
"originated, acquired or adopted it and has used it to the extent that it has gained the reputation as
indicating that the goods in relation to which it is used" belonged to Spitz (Moorgate Tobacco Co Ltd v Philip
Morris Inc a trade mark determination by Hon WG Trollip referred to, inter alia, b y S o u t h w o o d J i n
Butterworths Publishers (Pty) Ltd v Jacobsens Group (Pty) Ltd and another [2005] 2 All SA 588 (T) at paragraph
[34]). As Colman J explained, extensive use creates the intangible property rights in an unregistered
(commonlaw) trade mark (Oils International (Pty) Ltd v Wm Penn Oils Ltd 1965 (3) SA 64 (T) at 70G). In other
words, Spitz had to discharge the same onus in relation to reputation that it would have had under a
passingoff claim (AdcockIngram Products Ltd v Beecham SA (Pty) Ltd 1977 (2) SA 434 (W) at 436H437E;
Caterham Car Sales and Coachworks Ltd v Birkin Cars (Pty) Ltd 1998 (3) SA 938 (SCA) at paragraphs [16] and
[21][22]) [also reported at [1998] 3 All SA 175 (SCA) Ed].