prove that there was "relevant use" of the trade mark rests upon the proprietor. "Relevant use" in this
context refers to bona fide use by the proprietor or bona fide use by a third party "with the licence of the
proprietor" (the latter is known as "permitted use": section 38(1)).29 We
Page 258 of [2005] 4 All SA 245 (SCA)
are accordingly concerned with bona fide use by the proprietor or a licensee during the period 13 May 1994
to13 May 1999. In order to qualify as bona fide use it is not necessary that the use was continuous use (as
required by section 36(2))30 although intermittent use may be indicative of the fact that it was not bona fide.
Use prior to 13 May 1994 and post13 May 1999 is for this part of the investigation irrelevant.
[28] The following matters have to be considered in this context: (a) Were the marks used during this period? (b)
Were they used by the proprietor? (c) Was any other use permitted use? (d) Was the permitted use
controlled? (e) Was the use bona fide?
[29] It is convenient to deal with the first two questions at the same time. The appellants concede that neither the
first GAP device mark (TM 80/5548) nor the GAP STORES mark (89/5087) was used during the relevant period
by any party. (The concession may have extended to GAP KIDS but that does not matter in the scheme of
things.) In
View Parallel Citation
addition, they accept in spite of generalised allegations to the contrary by Dr Vahed, that the proprietor was
at all relevant stages a dormant company and did not use any of the marks. Yet, it cannot be doubted that
members of the Group did use the one or the other of the remaining marks (73/1378 and 88/4994) during this
period. There is evidence to this effect not only from Dr Vahed but also, for instance, from a wholesaler (Mr
Shapiro) who purchased GAP clothing from the Group and distributed it, all of which was not disputed. Which
one of the two marks was used though is unclear. As Daniels J correctly pointed out, Dr Vahed:
"indiscriminately uses the plural and singular when referring to the various marks. . . . No distinction is drawn
between the marks. He goes so far as to refer to 'the Gap and related' marks, and elsewhere the expression 'the
various marks' was used."
For instance the sales figures provided relate to sales "under the various GAP trade marks" although, as
mentioned, it is conceded that the statement is incorrect, at least as far as the first device mark is concerned.
However, a number of labels, which allegedly had been used, were produced and they show use of the
second device mark and of the word "GAP".
[30] Even though the appellants' evidence on this aspect of the case is unsatisfactory, that is not fatal to their
case. The general rule that a mark must be used in the form in which it is registered31 does not necessarily
apply to associated marks. Section 31(1) provides:
"When under the provisions of this Act use of a registered trade mark is required to be proved for any purpose,
the registrar or the court, as the case
Page 259 of [2005] 4 All SA 245 (SCA)
may be, may, if and so far as he or it deems fit, accept proof of the use of an associated registered trade mark or
of the trade mark with additions or alterations not substantially affecting its identity, as equivalent to proof of the
use required to be proved."
The provision applies because the original THE GAP word mark and the two device marks (one consisting of
the word GAP and the other of the words THE GAP) are associated marks. In addition, according to the sub
section, use of the word GAP on its own can be equivalent to use of THE GAP because the difference between
them cannot affect the registered mark's identity. Also, use of the name THE GAP in any stylised form amounts
to use of THE GAP (73/1378) because that registration is not restricted to those words in any particular
colour, style, manner or font.
[31] Having found that at least one of the associated marks was used by members of the Group, and in the
absence of any reason not to exercise the discretion contained in section 31(1) in favour of the proprietor,
the next question to consider is whether such use was with its "licence". Dr Vahed's evidence in this regard is
not only vague to such an extent that it smacks of evasiveness, but it is also contradictory. The problem lies in
the loose structure of the Group, which consists of companies and partnerships with an overlap of
shareholders and directors. The Group, it appears, tends to ignore corporate identities and moved enterprises
View Parallel Citation
between companies. For instance, at times the fourth appellant itself conducted business and at other times a
business under its name appeared to be an operating division of the second appellant.32 In line with this
approach, Dr Vahed said that when the Group obtained control of the proprietor it (the Group) "acquired" the
GAP trade marks. These were dealt with as Group property, any member using them whenever it suited it. If
then, in a 200page affidavit, Dr Vahed dealt with the issue of licensing in a single phrase, saying that the use
by the members of the Group since 1983 was "with the licence" of the proprietor, one has to conclude that
this was no more than a mere allegation and did not amount to factual evidence. Affidavits in application
proceedings must do more than make bald allegations; they must in addition provide the facts that support
the allegations. If the licence had been in terms of a written agreement, one would have expected some
particularity and perhaps even the production of a copy; if oral, one would have expected some indication of