NSE Products Incorporated v Avid Brands SA (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Tuwe, AN
• Citation: 2015 JDR 2396 (TRM)
• Court: Registrar of Trade Marks
• Docket Number: 1980/5241

Tuwe AN:

NSE Products Incorporated (the "Applicant") applied for the removal from the Register of Trade Marks of trade mark registration numbers 1980/05241 NU-SKIN in class 5 and 1994/09915 NU-SKIN in class 3 either wholly or in part.

Avid Brands SA (Pty) Ltd (the "Respondent'') is the proprietor of the above-mentioned trade marks. Trade mark registration no. 1980/05241 NU-SKIN in class 5 is registered in respect of "Pharmaceutical preparations including vitamins and vitamin preparations, foodstuffs included in this class". Trade mark registration no. 1994/09915 NU-SKIN in class 3 is registered in respect of "Soaps, soapless washing preparations, perfumery, essential oils, cosmetics, hair lotions and dentrifices".

The application is brought in terms of the provisions of Section 27(1)(b) of the Trade Marks Act, Act 194 of 1993 (the "Act"). Section 27(1)(b) provides as follows:

Section 27. Removal from register on ground of non-use

(1)

Subject to the provision of section 70 (2), a registered trade mark may, on application to the court, or, at the option of the applicant and subject to the provisions of section 59 and in the prescribed manner, to the Registrar by any interested person, be removed from the register in respect of any goods or services in respect of which it is registered, on the grounds of either-

(b)

that up to the date 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 section 38

2015 JDR 2396 p3

Tuwe AN

during the period concerned.

The issue to be decided is whether, up to the date three months before the date of application, a continuous of five years elapsed during which there was no bona fide use of the trade mark in relation to the goods in respect of which the mark is registered by the Respondent or its predecessor in title to the trade mark registration.

In terms of Section 27(3) of the Trade Marks Act 194 of 1993, (the "Act"), the onus of proving that there has been bona fide use in respect of the goods registered under trade mark registration nos. 1980/05241 and 1994/09915 is on the Respondent. This onus is not a mere shifting of the evidentiary burden. The Respondent has the burden of a true onus. (Scientific Chemicals (Pty) Ltd v Liqui-Seal (Pty) Ltd 202 BIP 85 (TPD) 88 D).

In its answering affidavit the Respondent alleged that during the period after the purchase of the NU-HAIR trade marks, the Respondent sold products under the NU-SKIN trade mark, the last sale having taken place on 28 November 2006. In support of this allegation the Respondent attached on pages 62 and 63 of the records, marked PNJ 6 and PNJ 7, a pack-shot on the NU-SKIN products as sold by the Respondent and an invoice in respect of the last sale of the products bearing the NU-SKIN trade mark.

The Respondent further alleged that they have other trade marks incorporating the word SKIN, namely SKINSAND which indicates their commitment to the skincare market. Copies of the register pages of the marks in question were attached as PNJ 8 and PNJ 9 and both applications are still pending. According to the Respondent the NU-SKIN trade mark was registered by...