Sidewalk Cafes (Pty) Ltd t/a Diggers Grill v Diggers Steakhouse (Pty) Ltd and
another 1990 (1) SA 192 (T) Discussed
98
Victoria's Secret Inc v Edgars Stores Ltd [1994] 4 All SA 307
(1994 (3) SA 739) (A) Referred to
97
United Kingdom
Birmingham Vinegar Brewery Co v Powell (1896) 13 RPC 235 Referred to
94
Judgment
SALIESAMUELS AJ:
This judgment is divided into two principal parts: the application for an interdict and the counterapplication for
partial expungement of the trade mark.
The parties were both legally represented. Mr Seale, appeared for the applicant and the Mr Micau for the
respondent.
The application
[1] The applicant, Etraction (Pty) Ltd (hereafter the "applicant") seeks an interdict restraining Tyrecor (Pty) Ltd
(hereafter the "respondent") from infringing the applicant's registered trade mark and costs. The application is
supported by the affidavit of Imtihaz Tayob Rahimtola, a duly authorised director of the applicant. The
applicant's trade mark is INFINITY, registration number 2008/0612 in class 12 in respect of "vehicle
components and accessories; tyres, wheels, rims" dated 15 April 2008. The applicant avers that the
respondent is infringing its rights by
". . . using in relation to tyres and/or in relation to wheels and/or in relation to tyre and wheel combinations, the
trade mark INFINITY or a mark so nearly resembling the Applicant's aforementioned mark as to be likely to deceive
and/or to cause confusion".
[2] The respondent, supported by the affidavit of Charl Pierre De Villiers, resists the application. The primary basis
of its defence is that it's (the
Page 92 of [2014] 2 All SA 90 (WCC)
respondent's) predecessor in title, Falck Trading (Pty) Ltd, commenced the use of the trade mark INFINITY
during 2006 as a consequence of which respondent and its predecessor's use of the trade mark INFINITY
predates the date of registration of the applicant's trade mark. Respondent argues that such use provides it
with a defence in terms of section 36(1) of the Trade Marks Act 194 of 1993 (hereafter the "Act"). The
respondent also makes a counterapplication for partial expungement of the trade mark in respect of tyres,
which will be dealt with later.
[3] The parties traversed numerous issues that cast no light on their dispute, and I will not refer to them in my
judgment. The real issues between the parties in respect of the application are as follows: Does the applicant
have a right to prevent the respondent from using the trade mark INFINITY registered in its name in the
Register of Trade Marks? Does section 36(1)(b) of the Act provide the respondent with a defence on the facts?
[4] It is trite law that the requirements for obtaining a final interdict are: a clear right, no other satisfactory
remedy and proof of irreparable harm if the interdict is not granted. The first issue is, therefore, whether or
not the applicant has a clear right. It is common cause that the applicant is the registered proprietor of the
INFINITY trade mark. A trade mark proprietor has the exclusive right, subject to the provisions of the Act, to
use the trade mark. The primary provision of the Act which secure this right is section 34(1) of the Act. The
applicant relies on section 34(1)(a) and in the alternative section 34(1)(b) of the Act. The relevant portion of
section 34(1)(a) provides that:
"The rights acquired by registration of a trade mark shall be infringed by
(a)
the unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark
is registered of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause
confusion".
It is trite law that for there to be infringement in terms of section 34(1)(a) there must be: (i) use of the
identical or a confusingly similar mark, (ii) in the course of trade, (iii) in respect of identical goods in relation to
which the trade mark is registered. It is also clear that if there is use of the identical mark in respect of
identical goods, the question of likelihood of deception or confusion need not be proved but is presumed. On
the facts in this matter, there is no need to consider section 34(1)(b) because the trade mark INFINITY is
registered in respect of tyres: there is consequently use of the identical mark in respect of identical goods, not
use in respect of similar goods which is the hallmark of section 34(1)(b) of the Act.
[5] The facts are that the respondent does not deny using the trade mark in respect of tyres and even though
the respondent contests the validity of the registration of the trade mark INFINITY in respect of tyres, the
applicant has established prima facie infringing use, even on the test in PlasconEvans Paints Limited v Van
Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) (referred to as the PlasconEvans rule) [also reported at [1984] 2
All SA 366 (A) Ed]. The respondent has raised both a defence and mounted a counterapplication in
response to the application. It is clear that if the counterapplication succeeds, the applicant has no right and
that ends the matter. I am, however, of the view that it is more appropriate to first deal