Reporter SA (plc) v Fin. Ing. SRL

• Jurisdiction: South Africa
• Judge: Tuwe, AN
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2397 (TRM)
• Docket Number: 1984/00883

Tuwe AN:

This is an application for the expungement of trade mark registration numbers 1984/00883 and 1995/04651 in respect of the trade mark REPORTER both in class 25 (the "disputed trade marks") in the of FIN. lNG. SRL (hereinafter referred to as "the Respondent"). The application was made in terms of section 27(1)(b) of the Trade Marks Act, Act 194 of 1993 ("the Act").

REPORTER S.A. (Plc) ("the Applicant") is a company registered in terms of the laws of Poland. It has applied for registration of the trade mark REPORTER & Device in class 25 in respect of "garments, footwear, headwear, underwear" under trade mark application no. 2005/13931. The Applicant's trade mark application was refused by the Registrar in terms of section 10 (14) of the Act against the disputed trade marks. It was this refusal that lead to this application for expungement of the Respondent's trade mark registrations

Section 27(1)(b) of the Act provides as follows :

"subject to the provisions 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 ground 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 the 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 the goods or services by any proprietor thereof or any person permitted

2015 JDR 2397 p3

Tuwe AN

to use the trade mark as contemplated in section 38 during the period concerned".

In terms of this section, the Applicant must be an "interested person". The Applicant is an interested person by virtue of the fact that it is the applicant for registration of a trade mark application refused in view of the disputed trade marks. Counsel for the Applicant submitted that the Applicant's refused trade mark application was clearly bona fide as it sought to protect the trading name of a company which had operated since 1995.

In terms of section 27(3), the onus of proving that there had been bona fide use rests on the proprietor of the mark, i.e. the onus rests on the Respondent in this matter. The Respondent bears the onus of proving that, in the relevant five year period (27 December 2002 to 27 December 2007), it or a permitted user had made bona fide use of the disputed trade marks in South Africa.

What the court must determine in an enquiry under section 27(1)(b) was summarised by Harms JA in A M Moola Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) par.27 as follows:

"According to sec 27(3), the onus to 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': sec...