Pratley Investments (Pty) Ltd v Northern Flagship Institution

• Jurisdiction: South Africa
• Judge: Tuwe, AN (Mr)
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2399 (TRM)
• Docket Number: 2002/11743

Tuwe AN:

The Applicant for registration is Pratley Investments (Pty) Ltd, a company duly incorporated and registered in terms of the laws of South Africa of Jackson Street, Factoria, Krugersdorp (hereinafter referred to as "the Applicant"). The Applicant has applied to register trade mark no. 2002/11743 MRS PLES in class 28 in respect of.

"Toys, games and playthings, decorations, novelties in the form of souvenirs'".

The application is being opposed by Northern Flagship Institution ("the Opponent", a statutory body created in terms of Section 6 (1) of the Cultural Institution Act, Act No. 119 of 1998. The Opponent is the operator of a number of museums in the Republic of South Africa and, in particular the Transvaal Museum ("the Museum").

The opposition was founded on the basis that, the Applicant's mark offends against Sections 10 (3) 10 (12) and 10 (13) and of the Trade Marks Act, Act 194 of 1993 ("the Act"), which provides as follows :

10.

Unregistrable trade marks - The following trade marks 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

2015 JDR 2399 p3

Tuwe AN

law, be contra bonos mores, or be likely to give offence to any class of persons,

(13)

a mark which, as a result of the manner in which it has been used, would be likely to cause deception or confusion.

A. POINT IN LIMINE

The Opponent had brought a formal application for an extension of time within which to file its Notice of Opposition until 15 January 2007. In the heads of argument filed on behalf of the Applicant, a point in limine was taken by Counsel for the Applicant that the Opponent had previously obtained numerous extensions of time, and it was submitted that this application for an extension of time should not be granted. Before this extension of time the Applicant argued that the Opponent requested eight extensions of time over a period of one year. Objections were raised to five of these extensions of time which were, according to the Applicant, ignored by the Registrar and eventually granted.

Regarding the alleged extensive investigation accompanying the application for the latest extension, the Applicant argued the papers filed by the Opponent did not support the allegation that extensive investigation were needed. The Applicant argued in its heads that the vast majority of the evidence filed in support of the opposition consisted of internet print-outs which would not have required the extensive investigations as was claimed by the Opponent. Even in relation to the old press cuttings the Applicant stated that it was inconceivable that it would have taken the Opponent more than a year to locate them. Counsel for the Applicant in its heads submitted that, the reason given by Mr Farrel that the file was mislaid did constitute "good cause", particularly in view of the fact that numerous unfounded extensions of time had already been granted.

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Tuwe AN

Counsel for the Applicant submitted that under these circumstances, an extension application should be refused.

Counsel for the Opponent, submitted that there was no substance to the point in limine. He argued that the investigations were necessary as they extended to various relevant background events that commenced as long ago as the 30th June 1934. In all instances of requesting these extensions of time the Applicant was provided with copies of the relevant request for extensions submitted by the Opponent. There were no objections raised to these extensions of time, except one as per a letter dated 27 July 2006 i.e. Annexure KP 15 at page 158 of the records. In this letter the Applicant stated that there was no agreement between the parties...