Everest Corporate Benefits (Pty) Limited v Everest Reinsurance Company

• Jurisdiction: South Africa
• Judge: Tuwe AN (Mr)
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2327 (TRM)
• Docket Number: Information not supplied

Tuwe AN:

Everest Corporate Benefits (Pty) Limited, a South African company, is the Applicant for registration of trade mark application no. 2001/18445 EVEREST & Design in class 36 in relation to "insurance and financial services, monetary affairs, financial planning, investment services, share and property brokers, medical aid schemes administration, asset requisitions and disposal services, clearing houses and underwriting services, commodity and money market services, all aspects dealing with short and long term insurance".

The Opponent is Everest Reinsurance Company, of the State of Delaware, United States of America. The Opponent is the applicant for the registration of trade mark application

2015 JDR 2327 p2

Tuwe AN

no. 2004/23552 in class 36 in relation to "Reinsurance and underwriting services", lodged on the 22 December 2004.

The opposition to the registration of the Applicant's mark is based on the provisions of sections 10(3), 10(12) and 10(16) of the Trade Marks Act 194 of 1993. The fourth ground of opposition is that the Opponent did not consent to the filing of the Applicant's application.

The relevant provisions of section 10 provides as follows:

10. Unregistrable trade marks

The following mark shall not be registered as trade marks or, if registered, shall, subject to the provisions of section 3 and 70, be liable to be removed from the register

(3) a mark in relation to which the applicant for registration has no bona fide claim to proprietorship

(12) a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons,

(16) a mark which is the subject of an earlier application as contemplated in paragraph (15), if the registration of that mark is contrary to the existing rights of the person making the later application for registration as contemplated in that paragraph.

The Opponent further claims that it has not given the Applicant consent to file its application for registration.

2015 JDR 2327 p3

Tuwe AN

The Applicant denies all these grounds and submit that the Registrar should reject them, thus allowing the Applicant's application to proceed to registration. The Applicant further submits that the Opponent has made no attempt to stop it from using the trade mark EVEREST for the past seven years.

Section 10(3) prohibits the registration of a mark in relation to which the Applicant...