A M Moolla Group Ltd and Others v the GAP Inc and Others

JurisdictionSouth Africa
Citation2005 (6) SA 568 (SCA)

A M Moolla Group Ltd and Others v the GAP Inc and Others
2005 (6) SA 568 (SCA)

2005 (6) SA p568


Citation

2005 (6) SA 568 (SCA)

Case No

123/2004

Court

Supreme Court of Appeal

Judge

Harms JA, Streicher JA, Brand JA, Lewis JA and Ponnan JA

Heard

August 19, 2005

Judgment

September 9, 2005

Counsel

A Findlay SC (with P Ginsburg SC and O A Moosa SC) for the appellants.
C E Puckrin SC (with R Michau) for the respondents.

Flynote : Sleutelwoorde D

Intellectual property — Trade mark — Expungement of — On grounds of non-use — Trade Marks Act 194 of 1993, E s 27(1)(b) — Proprietor bearing onus of proving 'relevant use' or 'permitted use' of mark — Quality control not required for 'permitted use'.

Intellectual property — Trade mark — Infringement — Well-known mark — Trade Marks Act 194 of 1993, F s 35 — Protection of well-known mark — Nature of protection — Sections 35(3) and 36(2) introduced into Act in compliance with South Africa's treaty obligations under art 6bis of Paris Convention and under Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) — Protection conferred differing from ordinary statutory protection by providing exception to principle of territoriality — Paris Convention and TRIPS requiring signatories to protect well-known trade marks against both registered G and unregistered local marks.

Intellectual property — Trade mark — Infringement — Well-known mark — Trade Marks Act 194 of 1993, s 35 — Protection of well-known mark — Claimant for protection to prove, inter alia, that mark well known in South Africa at time when H reproduced, imitated or translated by local enterprise.

Headnote : Kopnota

One H had in March 1973 registered a certain trade mark in respect of articles of clothing and footwear. During the 1970s the proprietor, to whom H had in the mean time assigned his mark, manufactured and sold a substantial quantity of clothing under it. During 1983 a group of I companies (the group) obtained control over the proprietor and slightly changed the mark so as to be identical to the corporate and trading name of the respondent, an American company that had been trading in clothing since 1969 and had registered its mark in the US in 1972. In 1988 the proprietor registered an additional series of marks, all of them blatant appropriations of the J

2005 (6) SA p569

respondents' various marks. The group proceeded to use these marks (purportedly under a licence A agreement with the proprietor) in the course of its business up to the time when the present proceedings were instituted by the respondents. They approached a Provincial Division of the High Court claiming that their principal mark was a 'well-known trade mark' that was entitled, without registration in South Africa, to protection under s 35(3) of the Trade Marks Act 194 of 1993 (the Act). (Section 35(3) in effect incorporated the provisions of art B 6bis of the Paris Convention for the Protection of Industrial Property into the Act and entitled the proprietor of a well-known foreign mark to restrain the use in South Africa of an identical mark.)

In addition to seeking protection under s 35(3) the respondents sought the expungement of the appellants' marks on the ground of their 'non-use' as intended in s 27(1)(b) of the Act. They C argued that the proprietor had not itself used the marks nor had it 'licensed' the group to do so. The appellants conceded that the proprietor was at all relevant times a dormant company that did not itself use any of the marks in question, but argued that the group had in fact been licensed to use the marks. The respondents submitted in this regard that even if there had been a licensing agreement, use D by the licensee was not 'permitted use' unless a licence agreement provided for quality control by or on behalf of the owner. While the appellants agreed with this proposition, they argued that the respondents had not properly raised the issue in their founding affidavit.

The respondents also alleged that since the proprietor was a dormant company, it had no bona fide claim to proprietorship, and accordingly sought expungement of the marks under E s 10(3) of the Act.

The Court a quo upheld the respondents' argument for protection under s 35(3) and granted an interdict against the appellants as well as their application for expungement on the ground of non-use. Lastly, it dismissed the respondents' claim for expungement under s 10(3). The appellants appealed against the first two parts of the order and the respondents against the last one. F

Section 27(1) of the Act provided that 'a registered trade mark may, on application to the Court, or, at the option of the applicant and subject to the provisions of s 59 and in the prescribed manner, to the Registrar by any interested person, be removed from the register in respect of any of the goods or services in respect of which it is registered, on the ground . . . (b) that up to the date G three months before the date of the application, a continuous period of five years or longer has elapsed from the date of issue of the certificate of registration during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof or any person permitted to use the trade mark as contemplated in s 38 during the period concerned . . . '. H

Section 35 provided that '(r)eferences in this Act to a trade mark which is entitled to protection under the Paris Convention as a well-known 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 establishment in, a convention country, whether or not such person carries on I business, or has any goodwill, in the Republic. (1A) In determining for the purposes of ss (1) whether a trade mark is well known in the Republic, due regard shall be given to the knowledge of the trade mark in the relevant sector of the public, including knowledge which has been obtained as a result of the promotion of the trade mark.'

Section 36(2) provided that '(n)othing in this Act shall allow the proprietor of a J

2005 (6) SA p570

trade mark entitled to protection of such trade mark under the Paris Convention as a well-known trade mark, to interfere A with or restrain the use by any person of a trade mark which constitutes, or the essential parts of which constitute, a reproduction, imitation or translation of the well-known trade mark in relation to goods or services in respect of which that person or a predecessor in title of his has made continuous and bona fide use of the trade mark from a date anterior to 31 August 1991 or the date on which the trade mark of the proprietor has become B entitled, in the Republic, to protection under the Paris Convention, whichever is the later, or to object (on such use being proved) to the trade mark of that person being registered in relation to those goods or services under s 14'.

Held, as to the question of the protection of the respondents' marks as well-known foreign marks, that the principle of territoriality meant that a trade mark was operative only within the C territory in which it was used and registered. In the case of a foreign mark, therefore, there was no legal bar to its adoption in South Africa unless the applicant knowingly and improperly appropriated the mark. (Paragraph [9] at 575A - C.)

Held, further, that the protection afforded to well-known foreign marks (both registered and unregistered) under art 6bis of the Paris Convention as incorporated into South D African statutory law by ss 35 and 36(2) of the Act differed from ordinary statutory protection because it provided an exception to the principle of territoriality. (Paragraph [15] at 578C.)

Held, further, that in order to be entitled to protection under s 35(3) and art 6bis, the 'foreign' mark had to have been well known at the time when the local enterprise reproduced, imitated or translated it. (Paragraph [22] at 581B - C.) E

Held, further, that this was not so in the instant case - the third appellant had become the proprietor of the mark at a time when the respondents' mark was not yet well known in South Africa. (Paragraph [25] at 582E - F.)

Held, further, as to the question of expungement on the ground of non-use, that s 27(3) saddled the proprietor with the onus of proving 'relevant use' of the mark in the form of F either bona fide use by the proprietor or bona fide 'permitted use' by a third party. Since the application for expungement was launched on 13 August 1999, the Court was concerned with bona fide use by the proprietor or licensee during the period 13 May 1994 to 13 May 1999 (see the wording of s 27). (Paragraph [27] at 583D - E.)

Held, further, that the following matter had to be considered in this context: (a) Were the marks used during this period?; (b) were they used by the proprietor?; G (c) was any other use permitted use?; (d) was the permitted use controlled?; and (e) was the use bona fide? (Paragraph [28] at 583F.)

Held, further, that since it was clear that at least one of the marks had been used by the group, the next question was whether such use had taken place with the 'licence' of the proprietor. On the evidence the grant of a licence to the group was not only improbable but also incompatible with perception that existed within the group H that the marks belonged to the group. (Paragraph [31] at 584H - I and 585D/E.)

Held, further, that the appellant had accordingly failed to discharge the onus of proving 'relevant use' of the mark during the period concerned. (Paragraph [34] at 586D.)

Held, further, as to the respondent's contention that unless a licence...

To continue reading

Request your trial
18 practice notes
  • The 'Dual Purpose' of Section 6(1) of the Trust Property Control Act: A Possible Solution to the Problems Caused by the Authorisation Requirement
    • South Africa
    • Stellenbosch Law Review No. , May 2019
    • 27 de maio de 2019
    ...interrelationship between contextualism and purposivism – see Du PlessisRe-interpretation 111.111A M Moolla Group Ltd v The Gap Inc 2005 6 SA 568 (SCA) par 17 where Harms JA stated that ‘‘[i]fone has to label this method of interpretation, it can either be an application of the ‘soewereine’......
  • LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another
    • South Africa
    • Invalid date
    ...to support such a conclusion (see [49], [63]). Cases cited Southern Africa AM Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) ([2005] 4 All SA 245; [2005] ZASCA 72): referred Arjo Wiggins Ltd v Idem (Pty) Ltd and Another 2002 (1) SA 591 (SCA) ([2002] 2 All SA 147)......
  • LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another
    • South Africa
    • Invalid date
    ...to support such a conclusion (see [49], [63]). Cases cited Southern Africa AM Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) ([2005] 4 All SA 245; [2005] ZASCA 72): referred Arjo Wiggins Ltd v Idem (Pty) Ltd and Another 2002 (1) SA 591 (SCA) ([2002] 2 All SA 147)......
  • Prior Use as a Ground of Opposition in South African Trade Mark Law
    • South Africa
    • Stellenbosch Law Review No. , May 2019
    • 27 de maio de 2019
    ...of the distinc tive value of a distinctive mark.13 Ss 10(6) a nd 35(3). See the decisio n in A M Moolla Group Ltd v T he Gap Inc 2005 6 SA 568 (SCA) , regarding the quest ion as to when a mar k must be well-known. T hese provisio ns grant protection eve n though a person does not carry on b......
  • Request a trial to view additional results
14 cases
  • LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another
    • South Africa
    • Invalid date
    ...to support such a conclusion (see [49], [63]). Cases cited Southern Africa AM Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) ([2005] 4 All SA 245; [2005] ZASCA 72): referred Arjo Wiggins Ltd v Idem (Pty) Ltd and Another 2002 (1) SA 591 (SCA) ([2002] 2 All SA 147)......
  • LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another
    • South Africa
    • Invalid date
    ...to support such a conclusion (see [49], [63]). Cases cited Southern Africa AM Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) ([2005] 4 All SA 245; [2005] ZASCA 72): referred Arjo Wiggins Ltd v Idem (Pty) Ltd and Another 2002 (1) SA 591 (SCA) ([2002] 2 All SA 147)......
  • Truworths Ltd v Primark Holdings
    • South Africa
    • Invalid date
    ...expunging PRIMARK mark from theregister (see [67]).Cases citedSouthern AfricaAM Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA568 (SCA): discussed and appliedMcDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd andAnother; McDonald’s Corporation v Dax Prop CC ......
  • Stuttafords Stores (Pty) Ltd and Others v Salt of the Earth Creations (Pty) Ltd
    • South Africa
    • Invalid date
    ...converse); and so on.’ (Paragraph [11] at 271C–F.)Annotations:Reported casesAM Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568(SCA): referred toIndependent Electoral Commission v Langeberg Municipality 2001 (3) SA 925(CC) (2001 (9) BCLR 883): dictum in para [9] appliedJ......
  • Request a trial to view additional results
4 books & journal articles
  • The 'Dual Purpose' of Section 6(1) of the Trust Property Control Act: A Possible Solution to the Problems Caused by the Authorisation Requirement
    • South Africa
    • Juta Stellenbosch Law Review No. , May 2019
    • 27 de maio de 2019
    ...interrelationship between contextualism and purposivism – see Du PlessisRe-interpretation 111.111A M Moolla Group Ltd v The Gap Inc 2005 6 SA 568 (SCA) par 17 where Harms JA stated that ‘‘[i]fone has to label this method of interpretation, it can either be an application of the ‘soewereine’......
  • Prior Use as a Ground of Opposition in South African Trade Mark Law
    • South Africa
    • Juta Stellenbosch Law Review No. , May 2019
    • 27 de maio de 2019
    ...of the distinc tive value of a distinctive mark.13 Ss 10(6) a nd 35(3). See the decisio n in A M Moolla Group Ltd v T he Gap Inc 2005 6 SA 568 (SCA) , regarding the quest ion as to when a mar k must be well-known. T hese provisio ns grant protection eve n though a person does not carry on b......
  • Deprivation of Trade Marks through State Interference in their Usage
    • South Africa
    • Juta South African Intellectual Property Law Journal No. , August 2019
    • 16 de agosto de 2019
    ...‘badge of origin’.39 Trade Marks Act s 2.40 Trade Marks Act s 2.41 See AM Moolla Group Li mited and Others v The Gap Inc a nd Others 2005 (6) SA 568 (SCA), paras [38]–[40]; and GC Webster & NS Pa ge South African La w of Trade Marks (2011) 4 ed para 3.16.42 Trade Marks Act s 9.DEPRIVATION O......
  • Analyses: The New Trade-mark Infringement Provisions: How Have the Courts Interpreted Them?
    • South Africa
    • Juta South Africa Mercantile Law Journal No. , August 2019
    • 16 de agosto de 2019
    ...it was well-known at the date onwhich art 6bis protection became available (see AM Moolla Group Ltd &Others v The Gap Inc & Others 2005 (6) SA 568 (SCA) in par [21]).These judgments have moved a long way from the requirement inMcDonald’s that a substantial number of consumers of that type o......
18 provisions
  • The 'Dual Purpose' of Section 6(1) of the Trust Property Control Act: A Possible Solution to the Problems Caused by the Authorisation Requirement
    • South Africa
    • Stellenbosch Law Review No. , May 2019
    • 27 de maio de 2019
    ...interrelationship between contextualism and purposivism – see Du PlessisRe-interpretation 111.111A M Moolla Group Ltd v The Gap Inc 2005 6 SA 568 (SCA) par 17 where Harms JA stated that ‘‘[i]fone has to label this method of interpretation, it can either be an application of the ‘soewereine’......
  • LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another
    • South Africa
    • Invalid date
    ...to support such a conclusion (see [49], [63]). Cases cited Southern Africa AM Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) ([2005] 4 All SA 245; [2005] ZASCA 72): referred Arjo Wiggins Ltd v Idem (Pty) Ltd and Another 2002 (1) SA 591 (SCA) ([2002] 2 All SA 147)......
  • LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another
    • South Africa
    • Invalid date
    ...to support such a conclusion (see [49], [63]). Cases cited Southern Africa AM Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) ([2005] 4 All SA 245; [2005] ZASCA 72): referred Arjo Wiggins Ltd v Idem (Pty) Ltd and Another 2002 (1) SA 591 (SCA) ([2002] 2 All SA 147)......
  • Prior Use as a Ground of Opposition in South African Trade Mark Law
    • South Africa
    • Stellenbosch Law Review No. , May 2019
    • 27 de maio de 2019
    ...of the distinc tive value of a distinctive mark.13 Ss 10(6) a nd 35(3). See the decisio n in A M Moolla Group Ltd v T he Gap Inc 2005 6 SA 568 (SCA) , regarding the quest ion as to when a mar k must be well-known. T hese provisio ns grant protection eve n though a person does not carry on b......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT