the "KG" mark predates Turbek's amendment to "KG", its application for registration of "KG" in class 25 is an
earlier application for purposes of the provision. The argument assumes that the amendment increased the
scope of Turbek's rights. I do not accept the correctness of the assumption on the facts of the case. It has
always been common cause that "KG" and "KG Italia" are confusingly similar. Furthermore, "KG Italia" could
have been registered subject to a disclaimer or limitation relating to "Italia". In that event Spitz would have
had no case under section 10(15). The deletion of "Italia" had more or less the same effect as a disclaimer or
limitation would have had.
Conclusion
[24] Having found that Spitz's application to have the two registrations removed has to be dismissed, it follows in
the light of my earlier findings that Spitz's application as a whole should have been dismissed with costs in
the court below. The appeal has, therefore, to succeed with costs and the following order is made:
1
The appeal is upheld with costs.
Page 293 of [2010] 2 All SA 284 (SCA)
2
The order of the court below is set aside and replaced with an order dismissing the application with
costs.
(Lewis, Ponnan, Mhlantla JJA and Hurt AJA concurred in the judgment of Harms DP.)
For the appellant:
AJ Bester instructed by Spoor and Fisher
For the respondent:
GE Morley SC and AM Annandale instructed by Bowman Gilfillan Incorporated
Footnotes
1
S 43:
"No person shall be entitled to institute any proceedings, to prevent, or to recover damages for, the infringement of
a trade mark not registered under this Act: Provided that nothing in this Act shall affect the rights of any person, at
common law, to bring an action against any other person for passingoff goods or services as those of another
person."