Viceroy Hotels LLC v the van Ryn Wine & Spirit Company Ltd

• Jurisdiction: South Africa
• Judge: F Coetzee (Ms), Registrar
• Judgment Date: 26 April 2012
• Docket Number: 1972/02718; 1972/02718/1
• Hearing Date: 27 July 2010
• Court: Commissioner of Patents

F Coetzee (Ms), Registrar

Viceroy Hotels LLC applied for the expungement of trade mark registration numbers 72/02718 VICEROY in class 35 and 72/02718/1 in class 43 in the name of The Van Ryn Wine and Spirit Company Limited ("the Respondent").

The expungement was sought in terms of Section 27(1)(a) and/or Section 27(1)(b) of the Trade Marks Act, Act No. 194 of 1993 ("the Act").

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F Coetzee (Ms), Registrar

The Respondent's trade marks are registered in respect of the following services:-

(a)

Trade mark registration no. 1972/02718 VICEROY, in class 35, in respect of:

"Bottle stores, cellars, wine and spirits merchants, including exhibitions relating to and/or promoting wines and spirits or in any way connected therewith, hire of vending machines and equipment for use in the wine and spirit industry and machines and equipment generally."

(b)

Trade mark registration no. 1972/02718/1 in class 43, in respect of:-

"Bars, clubs, supplying of alcoholic and non-alcoholic drinks, cafes, cafeterias, restaurants, snack-bars, supplying of meals and snacks, catering, including the supplying of staff and the furnishing of articles of all kinds for functions, parties and the like, hotels and hotel management, room hire."

The Respondent's trade marks are associated with trade mark registration no 1937/01224 VICEROY, in class 33, in respect of:-

"All the goods included in this class except tonic wines"

The expungement was based on the Applicant's trade mark applications for the mark VICEROY in classes 36, 37 and 43 under application nos. 2006/16463, 2006/16464 and 2006/16465. The Applicant applied for the expungement of the trade mark VICEROY in classes 35 and 43 as the Respondent's trade mark registrations would pose a bar to the use and registration of the Applicant's trade marks.

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F Coetzee (Ms), Registrar

The Respondent opposed the expungement application, arguing that its VICEROY trade mark was well-known in South Africa, its use of the class 33 VICEROY trade mark was in terms of Section 33(1) of the Act, and thus constituted equivalent use of VICEROY in classes 35 and 43.

The Respondent however conceded that it had not made use of its trade mark VICEROY in respect of the services protected by its class 35 and 43 registrations. The Respondent's trade marks were originally registered in class 42, and were subsequently re-classified on 2 August 2007, into classes 35 and 43.

Sections 27(1)(a) and (b) of the Act provides that:-

Removal from the register on ground of non-use:-

(1)

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 of the goods or services in respect of which it is registered, on the ground of either-

(a)

that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or any person permitted to use the trade mark as contemplated by section 38, and that there has in fact been no bona fide use of the trade mark in relation to those goods or services by

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F Coetzee (Ms), Registrar

any proprietor thereof or any person so permitted for the time being up to the date three months before the date of the application,

(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 those goods or services by any proprietor thereof or any person permitted to use the trade mark as contemplated in section 38 during the period concerned"

The Applicant in its heads of argument in paragraphs 8 on page 5, further referred to Sections 27(5) and 31(1) of the Act.

Section 27(5) provides that:-

"subsection 1(a) and (b) does not apply to a trade mark in respect of which protection may be claimed under the Paris Convention as a well-known trade mark within the meaning of section 35(1) of this Act."

Section 31(1) provides that:-

"When under the provisions of this Act use of a registered mark is required to be proved for any purpose, the registrar or the court, as the case may be, may, if and so far as he or it deems fit, accept proof of the use of the associated registered

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F Coetzee (Ms), Registrar

trade mark or of the trade mark with additions or alterations not substantially affecting its identity, as equivalent to proof of the use required to be proved."

The trade marks sought to be expunged were registered in terms of Section 53 of the Trade Marks Act, Act No...