[18] Spitz has a chain of stores specialising in footwear but it also sells clothing. During 2000 it had 17 stores
countrywide. As mentioned, it held the "Kurt Geiger" trade mark since 1990, and it sold its trademarked
merchandise exclusively through its stores. It cannot be doubted that it had, apart from its registered mark, a
substantial reputation in "Kurt Geiger". Although Spitz alleged in its founding papers that it also had a
substantial reputation and goodwill during 2000 in the "KG" trade mark due to extensive use, it appeared
that this statement was seriously misleading as was the whole tenor of the founding affidavit on prior use. It
transpired ultimately that all that Spitz could establish as far as footwear is concerned was that it had
advertised before 2000, maybe as early as 1997, footwear under a combination trade mark consisting of the
letters KG with an
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overlay of the name Kurt Geiger. Only in reply did Spitz clarify the position when it admitted that it did not and
does not brand its footwear as "KG". It then stated that the basis of its case was that it had used the trade
mark Kurt Geiger since 1972 in relation to footwear; that the public has "always" known and referred to the
Kurt Geiger brand as "KG"; that it had used the combination trade mark in relation to clothing and footwear
since "at least" 1997; and that it had used "KG" in relation to clothing and related accessories since "at least"
1997.
[19] There is no objective evidence of use of the trade mark "KG" prior to the effective date of Turbek's
applications, namely 7 March 2000, and in the light of the way the founding affidavit was formulated one
cannot rely simply on the uncorroborated allegations made on behalf of Spitz. The only evidence of use of
"KG" on clothing or accessories in 2000 consists of two photographs of shirts taken inside a store. The camera
dated them as "00, 9 12" and this, the deponent said, proves that they were taken on 12 September 2000.
Accepting that, it does not prove an existing reputation as at the effective date. The one photo shows a
number of folded shirts with the mark "KG" on them. It is not possible to determine the significance of the
initials especially where the unfolded shirts use either Kurt Geiger or the combination mark. The photo of the
store's interior shows the use in large letters of the Kurt Geiger mark and not the combination mark in
relation to footwear.
[20] The allegation under oath that the public has "always" known and referred to the Kurt Geiger brand as "KG"
is not only a gross overstatement of what the few unimpressive confirmatory affidavits state but also appears
to me to be contrived and in conflict with the probabilities that flow from the steps Spitz took during 2000 and
thereafter in respect of trade marks. On 10 April 2000, Spitz applied for the registration of the combination
mark in class 25. Surprisingly for a company that is brand conscious and thought that it had trade mark rights
in relation to the "KG" mark, it did not file at that time a similar application for "KG". It was only on 20
September 2001 that it applied for the registration of "KG" in class 25 and also in class 9, which was followed
a few days later by a letter of demand addressed to Turbek. Spitz there stated that it had used its "trade
marks Kurt Geiger and KG extensively . . . in relation to . . . footwear", presaging the misrepresentation
contained in the founding affidavit. It knew by then that Turbek was using the trade mark KG Italia which is
confusingly similar to "KG" but in spite of its threats it took no action based on passingoff until seven years
later.
[21] Spitz's fallback argument was that "KG" was the dominant part of the combination mark and that its rights to
the "KG" mark flowed from that fact. I do not believe that it was dominant. "Kurt Geiger" is the older and more
prominent mark. Furthermore, clothes and this applies also to footwear usually have a clear indication of
their trade origin on internal labels (Daimler Chrysler AG v Javid Alavi t/a Merc [2001] RPC 813 823 the facts of
this case are rather illuminating) and are bought with reference to their labels (Jeremy Phillips Trade Mark Law
A Practical Anatomy (2003) OUP paragraphs 10.2910.33). This is especially true in the case of
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"designer" clothing such as "Kurt Geiger" products. Spitz sold the products only in its own stores where,
according to the photos, the mark "Kurt Geiger" was displayed prominently without the combination. In my
judgment, the scale and nature of the conjunctive use was such that no separate and distinct reputation
arose in relation to "KG" simpliciter.
The section 10(15) attack
[22] I have mentioned that Turbek, before acceptance and advertisement, applied for the amendment of its
applications from "KG Italia" to "KG". The amendment was effected after the date of Spitz's application for
registration of "KG" in class 25, namely 20 September 2001. Spitz alleged that the amendment could not have
been effected ex parte and without notice to it. The amendment took place in terms of section 46(1), which
entitles the Registrar, before the registration of a trade mark, to permit the amendment of any document
relating to the application on such terms as he may think just. The complaint is that the Registrar should have
required notice to Spitz of the proposed amendment in the light of its pending "KG" application in class 25. On
the assumption that the Registrar had erred, the complaint should have been addressed by means of review
proceedings under section 57 of the Act, something Spitz has failed to do. Indirect reviews are generally not
countenanced (compare KimberlyClark of SA (Pty) Ltd (formerly Carlton Paper of SA (Pty) Ltd) v Proctor and
Gamble SA (Pty) Ltd 1998 (4) SA 1 (SCA) at 14H15C, [1998] 3 All SA 77 (SCA); South African Football Association
v Stanton Woodrush (Pty) Ltd t/a Stan Smidt and Sons 2003 (3) SA 313 (SCA), [2003] 1 All SA 274 (SCA) at
paragraph [28]).
[23] Section 10(15) provides that a mark may not be registered and, if registered, is subject to revocation, if it is
identical or confusingly similar to a mark which is the subject of an earlier application by a different person in
respect of the same or similar goods or services. Spitz submitted in this regard that since its application for