View Parallel Citation
mark' or an 'international registration'. Rather, it recognizes the principle of the territoriality of trademarks
[in the sense that] a mark exists only under the laws of each sovereign nation."
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 29:25 (4ed 2002).
It follows from incorporation of the doctrine of territoriality into United States law through section 44 o f t h e
Lanham Act that United States courts do not entertain actions seeking to enforce trade mark rights that exist only
under foreign law. See Person's Co, Ltd v Christman, 900 F 2d 1565, 156869 (Fed Cir 1990) ('The concept of
territoriality is basic to trademark law; trademark rights exist in each country solely according to that country's
statutory scheme')."
[11] Accordingly, the legality and propriety of Hirsch's adoption of the first two trade mark registrations is beyond
dispute. Although one may query the business morality of the adoption by slavish imitation of the
respondent's trade marks after the Group's takeover, it was also legally in order in the absence of
"something more", ie, "factors that may have vitiated or tainted his right or title to the proprietorship
thereof".7 The only factor raised in this regard is the allegation that the respondents' GAP trade marks are
wellknown in South Africa, which brings me to the next issue, namely the protection of wellknown trade
marks.
Page 251 of [2005] 4 All SA 245 (SCA)
Protection of wellknown trade marks
[12] Special legislative protection is given to wellknown trade marks. There are two possible situations. The one
relates to the protection of a wellknown registered mark against dilution as contained in section 34(1)(c) and
which was the subject of the recent Laugh it Off judgments of this court8 and the Constitutional Court.9 The
other, which is the one applicable in this case, relates to the statutory protection based on article 6 bis of the
Paris Convention for the Protection of Industrial Property (1883), which provides for the protection of well
known trade marks that have not been registered (and if registered, have not been used and therefore
otherwise subject to expungement)10 that belong to "qualified" enterprises. Article 6bis was first introduced
with The Hague revision (1925) and its present form, which was adopted during the Lisbon revision (1958),
provides as follows:11
"(1)
The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an
interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which
constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by
the competent authority of the country of registration or use to be well known in that country as being
already the mark of a person entitled to the benefits of this Convention and used for identical or similar
goods. These
View Parallel Citation
provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well
known mark or an imitation liable to create confusion therewith.
(2)
A period of at least five years from the date of registration shall be allowed for requesting the cancellation
of such a mark. The countries of the Union may provide for a period within which the prohibition of use must
be requested.
(3)
No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered
or used in bad faith."
[13] South Africa is not only party to the Paris Convention but also to the GATT "Agreement on TradeRelated
Aspects of Intellectual Property Rights" (the socalled TRIPS agreement), which requires compliance with a
number of the provisions of the Paris Convention, including article 6b i s (article 2.1). In addition, TRIPS
"supplements" article 6bis: whereas the article 6bis protection is limited to trade marks relating to goods,
TRIPS envisages the protection of service marks (article 16.2); and while article 6bis prohibits the use of a
wellknown mark on "identical or similar" goods, TRIPS (article 16.3) requires wider safeguards, namely, in
relation
"to goods or services which are not similar to those in respect of which a trademark is registered, provided that
use of that trademark in relation to those goods or services would indicate a connection between those goods or
services and the owner of the registered trademark and provided that the interests of the owner of the registered
trademark are likely to be damaged by such use."
Page 252 of [2005] 4 All SA 245 (SCA)
[14] In anticipation of the adoption of TRIPS, article 6bis was introduced as part of our statutory law in terms of
sections 35 and 36(2) of the current Act:
"35.
Protection of wellknown marks under Paris Convention.
(1)
References in this Act to a trade mark which is entitled to protection under the Paris Convention as a
wellknown trade mark, are to a mark which is well known in the Republic as being the mark of
(a)
a person who is a national of a convention country; or
(b)
a person who is domiciled in, or has a real and effective industrial or commercial