(a)
The first is the identification of the sector of the population "interested in the goods or services to which
the mark relates".19 The respondent's case was that this "universe" consists of individuals aged
between 16 and 50 and living in an A+ income suburb, the reasoning being that such persons were
likely to have travelled overseas and would have encountered the GAP marks abroad.
(b)
Next is whether the mark is wellknown within the local jurisdiction as a trade mark belonging to an
enterprise with a base in another country (although the knowledge does not have to include the fact
that the country is a convention country).20
(c)
The last issue is the determination of whether those who have the requisite knowledge represent a
substantial number of the chosen universe.21
View Parallel Citation
[19] Reverting to issue (b), the UK hearing officer in the Swizzels Matlow Limited trade mark application (the Polo
trade mark),22 relying on McDonald's (supra) gave this useful exposition:
"As I have indicated above the basic purpose behind Article 6bis would appear to me to be to protect trade marks
which are wellknown in a country but are not used there. So in the normal course of events there is a
presumption that the party seeking protection under Article 6bis has some form of base in a foreign country and in
the normal course of events the consumer would be aware of this owing to the absence of the use of the trade
mark in the country in which the claim is being [asserted]. Article 6bis states "well known in that country as being
already the mark of a person entitled to the benefits of this Convention". It seems to me that this must be read as
requiring the trade mark to be wellknown as the trade mark of a person with a base in a country outside the
United Kingdom i.e. that the consumer must identify some overseas base with the trade mark.23 I t w o u l d
however be silly to expect that the consumer should also know that the country is a signatory to the Convention."
[20] What the respondent primarily sought to establish was that GAP was a wellknown trade mark at the time the
present proceedings were initiated in the court below. To this end a market survey was conducted using as a
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basis the said "universe" of individuals. Of these, 48 per cent recognised the GAP logo and they
overwhelmingly associated it with casual clothing. A quarter of the universe thought that the retail outlets
were local, 11 per cent thought they were international and the rest did not know. As far as manufacturing
origin is concerned, 29 per cent believed GAP goods were manufactured overseas (mostly in the USA), 12 per
cent thought they were of a local origin and 11 per cent did not know. (The percentages are approximations.)
[21] I have serious doubts that this evidence establishes any one of the three points mentioned. However, since
there is some evidence, as the court below noted, which might suggest that the GAP mark was wellknown to
persons in the trade as that of a foreign concern since about 1988 (although that was not the case the
appellants were called to meet) I shall assume in favour of the respondent that its GAP marks were well
known in South Africa as at 31 August 1991. That is the date referred to in section 36(2) of the Act and was
the date on which the bill that led to the current Act was published. It is also the earliest date on which article
6bis protection became available. Section 36(2) by implication distinguishes between two cases: (i) trade
marks that were already wellknown at that date are entitled to protection subject to the recognition of
certain prior rights; (ii) trade marks that become wellknown after that date are entitled to protection as soon
as they become so known. There is little doubt that as at 1991 the proprietor as trade mark owner was not
making use of any of its trade marks on a "continuous and bona fide" manner as required by section 36(2)
and accordingly was not entitled to the recognition of existing rights by virtue of this provision. Although it
may have licensed other parties to use some of them, these licences were not
View Parallel Citation
registered user agreements as was required by section 48 of the then existing Trade Marks Act 62 of 1963,
all matters to which I shall revert in another context.
[22] That does not dispose of the matter in the respondent's favour. In order to be entitled to the protection
granted by section 35(3), the objectionable trade mark has to constitute "a reproduction, imitation or
translation of the wellknown trade mark" of a "qualified" party. In other words, unless the "foreign" trade
mark was wellknown at the time when the local enterprise reproduced, imitated or translated it, the foreign
trade mark is in the light of the principle of territoriality not entitled to article 6bis protection.24
[23] This conclusion conforms to the judgment in Person's.25 The facts bear a striking resemblance to the facts in
this case. In 1977, X first applied a stylised logo bearing the name PERSON'S to clothing in his native Japan.
Two years later he formed a company, P, to market and distribute the clothing items in retail stores located in
Japan. In 1981, one C visited one of P's retail stores while on a trip to Japan and purchased clothing items
Page 256 of [2005] 4 All SA 245 (SCA)
bearing the PERSON'S logo. He then developed designs for his own PERSON'S brand sportswear line based on
P's products and in 1982 he began producing clothing with the PERSON'S logo. All C's goods bore either the
mark PERSON'S or a copy of P's globe logo and many of the clothing styles were apparently copied directly
from P's designs. In 1983, C filed an application for a US trade mark registration of the PERSON'S mark. Some
seven months subsequent to C's first sales P entered the US market. P sought the expungement of C's
registration. The matter was first heard by a board and the judgment next quoted was the decision on
appeal.