of applicant's INFINITY tyres would follow. It is further argued by the applicant that it had the "definite
intention" (paragraph 14.8, page 10 of the Expungement Application) to use the mark INFINITY as its principal
trade mark in relation to its own range of tyres, wheels and rims and still has the intention of doing so. In
reply, it is contended on behalf of the respondent that the applicant's absence of any use of the trade mark
INFINITY on tyres do not support the bold assertions that it wishes to use the trade mark and it would appear
that it clearly never had a definite intention to use.
[18] The respondent bases its application on three sections of the Act: 10(3), 10(7) and 27(1)(a). The essence of
section 10(3) is prohibition against registration of a trade mark in respect of which "the applicant for
registration has no bona fide claim to proprietorship"; section 10(7) prohibits the registration of a mark "the
application of which was made mala fide; and section 27(1)(a) empowers an interested person to apply for
removal of trade mark from the register if the:
"trade mark was registered without any bona fide intention on the part of the applicant for registration that it should
be used in relation to those goods or services by him or any other person permitted to use the trade mark as
contemplated by section 38 and there has in fact been no bona fide use of the trade mark in relation to those goods
or services by any proprietor thereof or any person so permitted from the time being up to the date three months
before the date of the application".
Notwithstanding the manner in which the respondent has pleaded in the counterapplication (using "and" in
the final line of paragraph 20.4 of De Villiers' answering affidavit) should the respondent succeed in terms of
any of the sections, there will be no need to traverse any other.
Page 96 of [2014] 2 All SA 90 (WCC)
[19] There is generally no bar to a person adopting for use and registering a trade mark in South Africa where that
trade mark is already used by another person abroad: Victoria's Secret Inc v Edgars Stores Ltd (the Victoria's
Secret case) 1994 (3) SA 739 (AD) [also reported at [1994] 4 All SA 307 (A) Ed]. In that case, the question
was whether Edgars was entitled to adopt and register the trade mark, VICTORIA'S SECRET, in South Africa,
given that Victoria's Secret Incorporated was the proprietor (and originator) of the trade mark in the USA.
Victoria's Secret Incorporated had applied for registration in South Africa subsequent to Edgars' application for
registration of the identical trade mark. The Court set out the law as follows:
". . . a trade mark is purely a territorial concept; it is legally operative or effective only within the territory in which it
is used and for which it is to be registered. Hence, the proprietorship, actual use, or proposed use of a trade mark
mentioned in s 20(1) are all premised by the subsection to be within the RSA" (page 745G).
The Court in the Victoria's Secret case held that: "In the case of a foreign trade mark, there is no legal bar to
its adoption in South Africa unless it is attended by something more . . . " (page 746F). The Court explained
that "unless it is attended by something more" meant that the adoption should not be attended by "any
factors that may have vitiated or undermined his right or title to the proprietorship thereof. Those factors
would comprehend dishonesty, breach of confidence, sharp practice, or the like" (page 747HI).
[20] With reference to the matter before me, the applicant had adopted the trade mark INFINITY as the trade mark
was already being used by the person from whom the applicant obtained the INFINITY merchandise which it
sold. It struck me highly relevant in this matter, that sometime during March 2008 business attempts including
a business meeting) were entertained by and between the parties. This in essence took the form of the
applicant trading in INFINITY branded tyres and selling thereof to the respondent. These discussions though
did not result in a successful business transaction. The applicant's adoption of the trade mark INFINITY by
applying for its registration two weeks after discussions with the respondent considered in conjunction with
the applicant's delay from the time of registration of the trade mark until 17 August 2011 before instituting
proceedings, as well as its use of the trade mark from 1995 until 2008 before applying for registration,
constitutes conduct approaching "sharp practice". Applicant's conduct vitiated its application for registration as
a bona fide claim to proprietorship of the trade mark is a primary requirement for registration.
[21] The Court in Broadway Pen Corporation and another v Wechsler and Co (Pty) Ltd and others (the Everglide case)
1963 (4) SA 434 (T) [also reported at [1963] 4 All SA 475 (T) Ed] found that an applicant's claim is only bona
fide if he/she/it intends to use the trade mark in respect of his/her/its own goods. The salient facts of that case
were that Broadway, a USA corporation sought the expungement of the trade mark EVERGLIDE, which was
registered in Wechsler's name in South Africa. Wechsler had claimed proprietorship of the trade mark
EVERGLIDE in its application for
Page 97 of [2014] 2 All SA 90 (WCC)
registration, despite the fact that it (Wechsler) has previously sold EVERGLIDE trademarked goods. It had also
previously acknowledged Broadway's ownership of the trade mark by unsuccessfully negotiating with
Broadway to become the exclusive distributor of EVERGLIDE pens in South Africa. The trade mark EVERGLIDE,
indicated that the goods had their origin in Broadway who had placed or at whose behest the trade mark was
placed on the goods, not Wechsler. The Court held: "it is clear from the context . . . that whoever used the
mark used it as Burnham's or Broadway's mark to indicate its goods". The Court held that Wechsler intended
"merely to use the mark on behalf of Burnham or Broadway" and ordered expungement of the trade mark
because the:
". . . facts point[ed] irresistibly to the conclusion that Wechsler's intention was to use the mark in South Africa either
as sole representative of or otherwise for and on behalf of Burnham or Broadway so as to indicate that the writing
instruments were the latter's and not its own goods" (page 446B).
The absence of an intention to use the trade mark in respect of its own goods disqualified Wechsler from
claiming proprietorship. The phrase "use in respect of its own goods" means that the person must intend to