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[2010] ZAGPPHC 45
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Salt of the Earth Creations (Pty) Ltd and Others v The GAP Inc and Another (11670/08) [2010] ZAGPPHC 45; 2010 BIP 163 (GNP) (17 June 2010)
IN THE HIGH COURT OF SOUTH
AFRICA
(NORTH
GAUTENG
HIGH COURT, PRETORIA)
Date: 2010-06-17
Case Number:
11670/08
In the matter between:
SALT OF THE
EARTH CREATIONS (PTY) LTD
First
Applicant
KINGSGATE
CLOTHING (PTY) LTD
Second
Applicant
PAUL VIVALDI
FASHIONS (PTY) LTD
Third
Applicant
and
THE GAP, INC
First
Respondent
REGISTRAR OF
TRADE MARKS
Second
Respondent
JUDGMENT
SOUTHWOOD J
[1]
The
applicants seek orders in terms of s 27(1)(a) and (b) of the Trade
Marks Act 194 of 1993 (‘the Act’) that the first
respondent’s trade marks, numbers 1994/10423 and 1990/05434,
both in respect of the mark ‘GAP,’ be removed from
the
register of trade marks.
[2] The applicants
are South African companies which carry on business in Durban as
manufacturers and distributors of clothing and
apparel. The first
respondent is a corporation incorporated under the laws of the state
of Delaware, United States of America,
which carries on business in
San Francisco, California, as a manufacturer of clothing, apparel and
personal care products. For
the past decade the parties have
conducted litigation as to who is entitled to use the GAP trade marks
in South Africa.
[3] Only the first
respondent opposes the application. If has delivered a lengthy
answering affidavit as well as a supplementary
answering affidavit.
The second respondent has played no part in these proceedings. The
first respondent will therefore be referred
to as the respondent.
[4
] The
applicants seek final relief on notice of motion. There are no
disputes of fact on the material issues and final relief may
be
granted if the facts averred in the applicants’ affidavits
which have been admitted by the respondent together with the
facts
alleged by the respondent justify the grant of final relief –
see
National
Director of Public Prosecutions v Zuma
[2009] ZASCA 1
;
2009
(2) SA 277
(SCA)
para
26. This is so irrespective of which party bears the onus –
see
Ngqumba
en ‘n Ander v Staatspresident en Andere
1988
(4) SA 224
(A)
at
260I-261B;
Pennello
v Pennello (Chief Family Advocate as
Amicus Curiae)
2004
(3) SA 117
(SCA)
at
138G-139F. The applicants have not requested the court to reject any
of the respondent’s evidence – see
Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd
[1984] ZASCA 51
;
1984
(3) SA 623
(A)
at
634E-635C;
National
Director of Public Prosecutions v Zuma supra
para
26 – and accept that none of the respondent’s allegations
of fact can be rejected.
[5
] Apart
from the usual founding, answering and replying affidavits, the
parties filed three additional affidavits: a supplementary
answering
affidavit (4
th
set),
a supplementary replying affidavit (5
th
set)
and a further supplementary replying affidavit (6
th
set).
Without formally applying for leave to file a further affidavit –
see
James
Brown & Hamer (Pty) Ltd v Simmons NO
1963 (4) SA 656
(A)
at
660E-G;
Standard
Bank of SA Ltd v Sewpersadh
2005 (4) 148 (C)
at para [13];
Waltloo
Meat & Chicken (Pty) Ltd v Silvy Luis (Pty) Ltd
[2008] ZAGPHC 136
;
2008 (5) SA 461
(T)
at paras [29] – [30] - the respondent filed the supplementary
answering affidavit (4
th
set). The applicants objected to the filing of the 4
th
set, but, in case the objection was not upheld, filed the
supplementary replying affidavit (5
th
set). The applicants then filed the further supplementary replying
affidavit (6
th
set). The respondent did not object to the filing of the
supplementary replying affidavit (5
th
set) but did object to the filing of the further supplementary
replying affidavit (6
th
set). The applicants gave notice of their intention to strike out
the supplementary answering affidavit (4
th
set) and the respondent gave notice of its intention to strike out
the further supplementary replying affidavit (6
th
set). Because time was limited, at the commencement of the hearing I
ruled that the parties should address full argument to the
court on
all the issues and that at the end of the case a ruling would be made
as to whether the court would receive the additional
affidavits (i.e.
the 4
th
,
5
th
and 6
th
sets). During argument the applicants did not seek to strike out the
4
th
set and did not persist in seeking leave for the 6
th
set to be filed. It also became clear that the parties consider that
the contents of both the supplementary answering affidavit
(4
th
set) and supplementary replying affidavit (5
th
set) are relevant and that they had in effect reached agreement that
these affidavits should be filed. In these circumstances,
and because
the affidavits do not change the substance of the parties’
contentions, I am satisfied that I should allow the
affidavits to be
filed to enable the court to properly decide the matter. Accordingly
I rule that the supplementary answering affidavit
(4
th
set) and supplementary replying affidavit (5
th
set) be filed.
[6
] The
respondent is the registered proprietor in terms of the Act of the
following two trade marks:
(1) trade mark no
94/10423, GAP, in class 3 in respect of ‘Body and bath soaps,
lotions, powders and salts; perfumery and
eau de toilette;
essential oils; cosmetics and cosmetic treatments; hair shampoos,
lotions and preparations; dentifrices’
(‘the class 3
mark’);
(2) trade mark no
90/05434, GAP, in class 30 in respect of ‘Biscuits, rusks,
bread, crisp bread, bread rolls, buns, scones,
cakes, pastry, flour
and meal, and flour confectionery’ (‘the class 30 mark’).
The respondent
acquired the class 30 mark by assignment with effect from 3 November
2000. The two trade marks are associated.
[7
] The
relevant parts of s 27 read as follows:
‘
(1) ... a
registered trade mark may, on application to the court, … 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 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 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 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; or
(c) …
(3) In the case of
an application in terms of paragraph (a) or (b) of subsection (1) the
onus of proving, if alleged, that there
has been relevant use of the
trade mark shall rest upon the proprietor thereof.’
The
applicants rely on paragraphs (a) and (b) of subsection (1) in
respect of the class 3 mark and on paragraph (b) of subsection
(1) in
respect of the class 30 mark. The respondent admits that the
applicants are ‘interested persons’ for purposes
of s
27(1).
[8
] S
27(1)(a) has two requirements:
(1) 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; and
(2) there has
in fact been no
bona
fide
use
of the trade mark in relation to those goods or services by any
proprietor thereof up to the date three months before the date
of the
application.
[9
] With
regard to the first requirement the passage from the judgment in
In
re Ducker’s Trade Mark
[1929]
1 Ch 113
(CA) ([1928]
45 RPC 105)
at
121 which was quoted with approval in
Victoria’s
Secret Inc v Edgars Stores Ltd
[1994] ZASCA 43
;
1994
(3) SA 739
(A)
at
745E-G describes the intention required –
‘…
a man must have an intention to deal, and meaning by the intention to
deal some definite and present intention to
deal, in certain goods or
descriptions of goods. I agree that the goods need not be in being
at the moment, and that there is
futurity indicated in the
definition; but the mark is to be a mark which is to be definitely
used or in respect of which there
is a resolve to use it in the
immediate future upon or in connection with goods. I think that the
word “proposed to be used”
means a real intention to use,
not a mere problematical intention, not an uncertain or indeterminate
possibility, but a resolve
or settled purpose which has been reached
at the time when the mark is to be registered.’
See the judgment of
the court
a
quo
in
McDonalds
Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd; McDonalds
Corporation v Dax Prop CC; McDonalds Corporation v
Joburgers
Drive-Inn Restaurant (Pty) Ltd
(unreported
judgment, TPD, 5 October 1995) at 48-52.
In the
Duckers
judgment
the court also said:
‘What is the
meaning of “
bona
fide
”?
I think that must mean a real intention in the sense which I have
already explained and if it is not found that there
was that real
resolve, intention and purpose, then it is shown that originally the
mark was put upon the Register when it ought
not to have been put on,
because there was not a sincere purpose to make use of the mark in
connection with the goods.’
See the
McDonalds
judgment
in the court
a
quo
at
51.
The learned
authors of
Webster
& Page
South
African Law of Trade Marks
4
ed (‘Webster & Page’)
summarise
the position in para 3.53 –
‘(A)n intention to use means a
definite and present intention to use the mark as a trade mark in
relation to certain goods
or services at the time the application is
made’ and
‘(A)n
ulterior purpose in applying for the mark may constitute a lack of a
bona
fide
intention
to use the trade mark as a trade mark’ and
‘(T)here must be a real
intention to use the mark in the future, not a general intention to
extend business or an uncertain
or indeterminate possibility’.
See also
Ritz
Hotel Ltd v Charles of the Ritz
1988
(3) SA 298
(A)
at
310B-C;
J.
Batt & Co
(1898)
15 RPC 534
(CA)
at
538.
An applicant for
registration must have such an intention when he applies for the
registration of the mark. If he does not have
a
bona
fide
intention
to use the mark, in terms of s 10(4) of the Act it is not registrable
and is liable to be removed from the register.
Ordinarily, it will
be difficult to obtain direct evidence that the applicant did not
have such a
bona
fide
intention
to use the mark and the person seeking removal will have to rely on
circumstantial evidence, the most important of which
is, obviously,
that there has not, in fact, been any
bona
fide
use
of the mark subsequent to its registration. In the
McDonalds
judgment
in the court
a
quo
at
52 the court said:
‘Non-user
for long periods of time such as ten, twenty or even twenty five
years, is obviously highly relevant to the question
of
bona
fide
intention
to use the trade mark and the absence of a satisfactory explanation
would justify an inference adverse to the proprietor
of the trade
marks’
See also
Webster
& Page
para
13.27 page 13-28 to 13-29.
S27(1)(a)
of the Act now provides that the proprietor can avoid the removal of
the mark by proving its bona fide use at any time
up to the date
three months before the date of the application to remove the mark
from the register.
[10
] The
applicant must establish that there has been no
bona
fide
use
of the trade mark in relation to the goods or services up to the date
three months before the date of the application. In
Arjo
Wiggins Ltd v Idem (Pty) Ltd and Another
2002
(1) SA 591
(SCA)
at
para [6] the court dealt with the concept of
bona
fide
use
as follows:
‘The
most authoritative treatment in our trade mark law of the concept of
bona
fide
use
is that by Trollip J in
Gulf
Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk,
where
“
bona
fide
user”
by a registered trade mark proprietor in resisting rectification of
the register under s 136 of the Trade Marks Act
9 of 1916 (the 1916
Act) was at issue. This Court confirmed the judgment of Trollip J,
but Steyn CJ expressly withheld endorsement
of the comprehensive
exposition of the concept at first instance. Trollip J’s
treatment was, however resurrected and approved
in
McDonalds
Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another;
McDonalds Corporation v Dax Prop CC and Another; McDonalds
Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Dax Prop
CC,
where
E.M. Grosskopf JA, although dealing with the avowedly “somewhat
different” context of s 36 of the present Act,
nevertheless
considered Trollip J’s reasoning to be “entirely
applicable”.’
In
AM
Moolla Group Ltd and Others v The Gap Inc and Others
2005
(6) SA 568
(SCA)
at
para [42] the court applied Trollip J’s finding that
bona
fide
user
–
‘means
a user by the proprietor of his registered trade mark in connection
with the particular goods in respect of which it
is registered with
the object or intention primarily of protecting, facilitating, and
furthering his trading in such goods, and
not for some other,
ulterior object.’
It
also referred with approval to the test formulated in
Ansul
BV v Ajax Brandbeveiliging BV
[2003]
RPC 40
(Court of Justice of the European Communities)
at
160 lines 49-55 –
‘When assessing whether use of
the trade mark is genuine, regard must be had to all the facts and
circumstances relevant
to establishing whether the commercial
exploitation of the mark is real, particularly whether such use is
viewed as warranted in
the economic sector concerned to maintain or
create a share in the market for the goods or services protected by
the mark, the
nature of those goods or services, the characteristics
of the market and the scale and frequency of use of the mark.’
[11
] S
27(1)(b) requires that it be shown that up to a date three months
before the date of the application there was no
bona
fide
use
of the trade mark in relation to the goods or service for a
continuous period of 5 years or longer.
Bona
fide
use
in this paragraph obviously has the same meaning as it has in
paragraph (a). With regard to the question of use for an ulterior
purpose, the court
a
quo
in
Gulf
Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk
1963
(2) SA 10
(T)
said
at 25E-F:
‘It
would follow that in my view a user merely to protect a trade mark
from expungement from the register under sec. 136,
without the
proprietor’s having any intention of trading in the goods in
respect of which it was registered, would not be
bona
fide
(cf.
Newchatel
Asphalte Co Ltd
,
30 RPC 349
at
p358 lines 3-8 and lines 30-50), because that would constitute an
ulterior purpose.’
On appeal (
1963
(3) SA 341
(A)
at
351E-F) the court said –
‘Whatever
the full meaning of the phrase may be, it seems clear that user for
an ulterior purpose, unassociated with a genuine
intention of
pursuing the object for which the Act allows the registration of a
trade mark and protects its use, cannot pass as
a
bona
fide
user
(cf.
Electrolux
Ltd v Electrix Ltd and Another,
71
RPC 23
).’
In order to
constitute
bona
fide
use
the use does not have to be substantial, and use may be
bona
fide
even
if it is motivated by the desire to defeat threatened proceedings for
expungement. In
Wistyn
Enterprises (Pty) Ltd v Levi Strauss & Co
1986
(4) SA 796
(T)
at
816H-J the court summarised the position as follows:
‘The
extent of the use within the relevant period is not material to the
question of
bona
fides
except
insofar as the extent of the use may afford guidance on the question
whether its purpose was or was not that which would
make the use
bona
fide
in
the sense laid down by Trollip J. If the necessary “object and
intention” were present, even use to a minor extent
may defeat
an application for expungement (see the
Nodoz
Trade Mark
1962
RPC (1)
).
Moreover, use may be
bona
fide
even
if the decision to undertake it at a particular time was influenced
by a desire to defeat threatened or feared proceedings
for
expungement (see
Electrolux
Ltd v Electrix Ltd
(1954)
71 (RPC) 37
).’
The use may also be
use within the extended meaning of use of a mark in s
ections
2 and 3 of the Act. S 2(2)(c) provides that references in the Act to
the use of the mark shall be construed, where the
mark is capable of
being audibly reproduced, as references to the use of an audible
reproduction of the mark and s 2(3)(a) provides
that references in
the Act to the use in relation to goods shall be construed as
references to the use thereof upon, in physical
or other relation to
such goods. In respect of use in other relation to goods it has been
held that use in advertisements and
promotional material is use in
other relation to goods – see
K-Mart
(Pty) Ltd v K-Mart Corporation and The Registrar of Trade Marks
(unreported
judgment, TPD, 18 December 1987) at 18-21 and
Contrapest
Holdings SA (Pty) Ltd v Ecolab Inc
1998
BIP 217 (T)
at
219G-220A. Both judgments quote, with approval, the conclusion
reached in the
Hermes
Trade Mark
(1982)
RPC 425
at
430 lines 14-19 -
‘Thus, if the registered
proprietor should commence a series of advertisements featuring his
mark as part of an introductory
campaign, prior to putting his goods
on the market under the mark, but before they were actually on the
market, in my judgment
such use would clearly be use of the mark in
the course of trade, not upon the goods or in physical relation
thereto, but it would
be in other relation thereto, the point being
that it would be use in the course of trade in those goods, albeit in
advertisements.’
In the
K-Mart
judgment
at 18 the court also referred to use of the mark during negotiations
with potential retailers and seemed to consider that
that was use of
the mark in other relation to the goods although it did not base the
judgment on that finding. It seems to me
that where the mark is a
word mark it is obviously capable of being audibly reproduced and its
use during negotiations with potential
retailers could, depending on
the context in which it is used, constitute use in other relation to
the goods. Nevertheless, the
learned authors of
Webster
& Page
(at 13.29) warn that the courts ‘must be careful to ensure that
trade mark proprietors do not, through the expedient of fictitious
or
simulated use, prove what is, in effect, a form of defensive
registration.’
[12
] Even
if the applicants establish the requirements of s 27(1)(a) and (b)
the court retains a general or residual discretion to
refuse to
remove a trade mark from the register but will exercise this
discretion only in exceptional circumstances – see
McDonalds
Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another;
McDonalds Corporation v Dax Prop CC and Another;
McDonalds
Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Dax Prop
CC
1997
(1) SA 1
(A)
at
31H-32C. In the absence of such circumstances the applicant for
removal is
prima
facie
entitled
to expungement for non-use.
[13] The respondent
admits that it has not used the class 30 mark during the relevant
period of 5 years (in fact, neither the respondent
nor the previous
proprietor ever used the mark) but alleges that it used the class 3
mark on two occasions, during the period 2002-3
and during the period
2007-8. The applicants cannot dispute what the respondent’s
deponents say but deny that such use constitutes
bona
fide
use.
If it is proved that the respondent used the class 3 mark during the
relevant 5 year period and that the use was
bona
fide,
such
bona
fide
use
is a complete defence to the applicants’ claim for removal of
the class 3 mark. In its answering affidavit the respondent
contends
that if the court finds such
bona
fide
use
it should exercise its discretion in terms of s 31 of the Act to
regard such use as use of the class 30 mark and refuse to remove
it
from the register.
[14
] S
31(1) of the Act provides that –
‘When
under the provisions of this Act use of a registered trade mark is
required to be proved for any purpose, … the
court, …
may, if and so far as … it deems fit, accept proof of the use
of an associated registered trade mark …
as equivalent to
proof of the use required to be proved.’
In
Distillers
Corporation (SA) Ltd v SA Breweries Ltd; Oudemeester Groep Bpk v SA
Breweries Ltd
1976
(3) SA 514
(A)
at
539B-D the court said the following with regard to s 39(1) of the
previous Trade Marks Act which, for all practical purposes,
is the
same as section 31(1) of the Act –
‘Now,
in exercising its discretion in secs. 38(5) and 39(1) as to whether
or not to accept the proof of the use of the associated
trade mark as
being equivalent to the use of the mark under enquiry (referred to
henceforth as “equivalent use”), the
Court, in my view,
should have regard to how closely the trade marks are associated and
resemble one another and the extent and
nature of the equivalent use.
The remoter the association, or the lesser the resemblance, or the
less satisfactory the equivalent
use, the more disposed the Court
should be to ignore the association or lean against accepting the use
of the associated trade
mark as being the required equivalent use.
While these may not be the only considerations bearing on the Court’s
discretion
under secs. 38(5) and 39(1), they are, I think, the
important ones.’
[15
] The
primary issues to be decided are therefore –
(1)
Whether
the respondent had a
bona
fide
intention to use the class 3 mark when it applied for registration;
(
2) Whether
the respondent has established that it used the class 3 mark at any
time up to the date three months before the date
of this application
or during the continuous period of five years up to the date three
months before the date of the application;
(3) Whether such
use was
bona
fide;
(
4) Whether
such
bona
fide
use
must be taken to be use of the class 30 mark in terms of section
31(1) of the Act.
[16
] With
regard to the respondent’s intention to use the class 3 mark
when it applied for registration the applicants refer
to paragraph
7.3 of the founding affidavit of Donald G Fisher, the respondent’s
chairman and founder, in the proceedings
instituted by the respondent
against the applicants and their related companies in 1999 under case
number 23518/99. (This affidavit
is attached to the respondent’s
answering affidavit marked JG3.) Under the heading ‘Expansion
of the Applicants’
Reputation and Goodwill in the Gap Trade
Mark’ Mr. Fisher says –
‘The
Applicants consider, and have for some time considered, much of the
world to be a marketplace for its GAP stores and
products. My
company has considered and does consider South Africa to have the
attributes of a country where GAP stores could
successfully trade and
GAP products and services could be manufactured, sold and offered.
My company wishes, and has wished, to
enter the South African market
at the appropriate time. In fact my company has already sourced
products from South Africa under
the OLD NAVY BRAND and would like to
source products branded with the GAP trade mark.’
(Mr. Fisher’s
affidavit consists of 78 pages. As will appear later it is one of
the documents which the parties agreed should
be struck out. In view
of the fact that paragraph 7.3 of Mr. Fisher’s affidavit was
the foundation for the applicants’
argument that when the
respondent applied to register the mark the respondent did not have
the requisite
bona
fide
intention
to use it, the failure to retain the relevant pages is a clear
oversight and the whole document will not be struck out.)
[17]
With
regard to the respondent’s initial use of the class 3 mark in
2002-2003 it is common cause that on 6 November 2001 the
applicants’
attorney addressed a letter to the respondent’s attorney (the
parties were already involved in litigation)
demanding that the
respondent voluntarily remove the class 3 and class 30 marks from the
register
inter
alia
on
the grounds of non-use, failing which, the applicants would institute
proceedings for removal of the marks in terms of s 27(1)(a)
and/or
(b) of the Act.
[18
] The
respondent alleges that it used the class 3 mark on two occasions
during the relevant 5 year period (i.e. 4 December 2002
to 4 December
2007): during the period August 2002 to May 2003 and again during the
period October 2007 to May 2008. The respondent
relies on a number of
affidavits in support of these allegations. The applicants cannot
and have not disputed the facts set out
in these affidavits. In
their replying affidavits they have commented on the allegations to
the effect that the facts set out
do not establish that such use as
is shown is
bona
fide
use
of the mark. In argument the applicants contend that on the facts
set out it should be inferred that the use was not
bona
fide
.
In respect of the first period, they rely on the chronology of
events, the paucity or absence of evidence of use of the mark
and the
nature of the evidence and, in respect of the second period, they
rely on the fact that the respondent’s goods bearing
the mark
were only sold in South Africa after the relevant period. The
respondent contends that its use oft the mark in 2002 to
2003 was
bona
fide
and in argument before this court the respondent’s answer to
the latter contention is that it used the mark ‘in other
relation’ to the goods when it negotiated with Stuttafords to
sell the GAP personal care goods and when it executed the order
which
Stuttafords placed for the goods. The question of whether the
respondent is entitled to raise this argument will be considered
later.
[19
] As
far as the first period is concerned, the respondent’s
principal deponent, Julie Gruber, who is the respondent’s
Vice
President and Deputy General Counsel, clearly has no personal
knowledge of the facts and relies on affidavits by Marci Friedman,
Julie Kanberg and Mark Borrelli filed in the previous expungement
proceedings brought by the applicants and their related companies
in
2002 and the affidavit of Orsolya Nadasdi deposed to in answer to the
present application. When she deposed to her affidavit
in November
2002 Marci Friedman was employed by Gap International BV, a
wholly-own subsidiary of the respondent, and was a senior
manager of
the International Sales Program. When she deposed to her affidavit
in May 2002 Julie Kanberg was the respondent’s
Vice President
and Associate General Counsel. When he deposed to his affidavit in
May 2002 Mark Borrelli was the respondent’s
Director of Global
Compliance and Operational Manager and since November 1994 had been
in the respondent’s Personal Care
Product department which is
responsible for the creation of all the respondent’s personal
care products. When she deposed
to her affidavit in April 2008
Orsolya Nadasdi was no longer employed by the respondent. However she
had been employed by the respondent
during the period December 1999
to September 2007 as Gap Brand Assistant Manager and had dealt with
Gap personal care products.
The applicants do not contend that these
witnesses do not have personal knowledge of the facts to which they
deposed. They also
do not object to the admissibility of any of the
evidence and accordingly it will be accepted, as the applicants did,
that the
evidence is admissible.
[20
] The
relevant facts may be summarised as follows:
(1) Between 1994
and 2002 the respondent’s personal care products were sold
under the GAP trade mark in the United States
of America, Canada, the
United Kingdom, France, Germany and Japan.
(2) The respondent began selling GAP
personal care products in Canada and the United Kingdom in 1995, in
France and Germany in 1996
and in Japan in 1997. These products
included eau de toilette, body lotion, shower gel, bath salts and
lipstick.
(3) The respondent
registered its GAP class 3 mark in the United States, Canada, the
United Kingdom, France and Germany and the
respondent and its
subsidiaries registered a large number of GAP class 3 marks in 39
countries.
(4)
During
the period 1995 to 2001 the respondent advertised its GAP class 3
products extensively throughout the world. While the respondent
is
unable to break down the amounts spent in advertising each of the
GAP, BANANA REPUBLIC and OLD NAVY products the advertising
expenditure in respect of the three brands grew from $60 541 000 in
1995 to $422 820 000 in 2001. Part of this advertising of
GAP class
3 products was in magazines which circulated in South Africa, for
example ‘Glamour’, ‘Elle’ and
‘Vogue’.
The advertisements prominently featured the GAP trade mark in
relation to the respondent’s personal
care products.
(5) Marci Friedman
was involved in attempts to market the respondent’s GAP
personal care products in South Africa. In February
2002 (which was
after receipt of the applicants’ letter of demand) she
approached Edgars Consolidated Stores Ltd (‘Edgars’)
and
in April 2002 she approached Ascot Cosmetics (‘Ascot’);
Foschini Retail Group Ltd (‘Foschini’) and
New Clicks
Holdings Ltd (‘Clicks’) with a view to distributing ‘a
limited selection’ of GAP personal care
products in South
Africa. Marci Friedman communicated by e-mail with these potential
distributors and some of her e-mails were
cc Julie Gruber.
(i)
Edgars
On 25 February
2002 Marci Friedman addressed an e-mail to a Mr. Allen Brown of
Edgars with a view to selling an assortment of personal
care products
‘featuring our signature GAP scents called ‘Dream’
and ‘Heaven’ in the South African
market
’.
Further correspondence reveals that the parties discussed the detail
of the relationship and that the respondent sent
Edgars a proposal
and samples of GAP perfumes. In most of the e-mails the subject is
given as ‘GAP personal care’
but it is clear that only
two eau de toilette products (‘Dream’ and ‘Heaven’)
in 100ml bottles were to
be supplied. Marci Friedman indicated
clearly that the respondent was interested in negotiating a contract,
selling the products
and shipping them by the end of March 2002.
Eventually during April 2002 the parties decided not to pursue the
negotiations and
they ended.
(ii)
Ascot
On 3 April 2002 Marci Friedman
addressed a similar e-mail to the one she had sent to Edgars to Ascot
with a view to selling an
assortment of personal care products
‘featuring our signature GAP scents called “Dream”
and “Heaven”
in the South African market’. Ascot
did not reply to this e-mail and there were no negotiations.
(iii)
Foschini
On 4 April 2002
Marci Friedman addressed an e-mail to Foschini seeking a way to
communicate in connection with the merchandising
of
personal care products and received a reply from Sharon Archer,
Foschini’s Merchandise Executive – Cosmetics. On
16
April 2002 Marci Friedman sent Sharon Archer an e-mail, similar to
that sent to Ascot and Edgars. Subsequent correspondence
between
Marci Friedman and representatives of Foschini shows that they
attempted to negotiate an agreement and that the respondent
sent
Foschini samples of the products to be sold. Regarding a query about
quantities and markets Marci Friedman replied on 2 May
2002 –
‘Regarding your questions
below:
As this is a new relationship, we
would like to limit our initial sale to 1 000 units per style. If
sales go well, and both of
us are happy with the relationship, we
would discuss more orders at that time. How does this work for
Foschini and how many stores
would be needed to support this?
We are not planning a formal
marketing campaign for this, however, we would be willing to discuss
potential in store support (X-customer
information cards) and limited
external advertising’.
The subsequent
correspondence also shows that Foschini was not prepared to enter
into an agreement on the terms proposed by the
respondent and that
negotiations terminated in August 2002.
(iv)
Clicks
On 25 April 2002,
after sending samples of the products to Clicks, Marci Friedman
addressed an e-mail to Carol Poolton of Clicks
similar to her letters
to Ascot, Edgars and Foschini, informing her of the respondent’s
interest in selling GAP brand personal
care products in South Africa,
the respondent’s desire to achieve this by August 2002 and
enquiring whether Clicks would
be interested in selling the GAP
products in its stores. After Carol Poolton expressed interest
,
further correspondence followed in which the parties discussed the
detail of the relationship. On 1 May 2002 Marci Friedman outlined
her initial proposal in respect of Gap ‘Dream’ Eau de
Toilette and Gap ‘Heaven’ Eau de Toilette. With
regard
to volume she said –
‘We would like to limit our
initial sale to 1 000 units per style. If sales go well, and both of
us are happy with the relationship,
we would discuss more orders at
that time.’
She also said that the respondent was
‘anxious to negotiate a contract, sell the product and ship the
product by end of May
2002’.
Negotiations
continued and by October 2002 an agreement was concluded. The
agreement was between Gap International BV (GIBV) and
Clicks and the
main appointment clause reads as follows:
‘GIBV
appoints Retailer as a non-exclusive retailer for the sale of certain
goods produced for GIBV and offered to Retailer
(‘Authorised
Goods’) for resale by Retailer through the retail stores listed
in Exhibit A in South Africa (the ‘Territory’)
and by
this reference made a part thereof. GIBV may amend the Territory
from time to time by written notice to Retailer, subject
to the
provisions of this Agreement. Retailer understands and acknowledges
that the Authorised Goods selected by GIBV for Retailer
will include
personal care products produced for GIBV for sale under the GAP Brand
(‘Brand’). Retailer agrees to purchase
Brand personal
care products offered to Retailer by GIBV each season in volumes
consistent with production and overall volume minimums
identified by
GIBV prior to Retailer’s order placement each season. Retailer
shall purchase the Authorised Goods from GIBV
and resell them for its
own account, in its own name, within the Territory.’
At that stage
Carol Poolton wished to expedite the delivery of the GAP products so
that they would be available in Clicks stores
for the Christmas
trading period commencing in the last week of November. The parties
then made arrangements for delivery of the
products and for payment
and Marci Friedman promised to deliver 100 units of each scent for
in-store testers. She also confirmed
that Clicks would track weekly
sales and order additional stocks as it became necessary and advised
Clicks of the respondent’s
advertising requirements. On 29
October 2002 Clicks sent Marci Friedman a fax with an order for 1 152
GAP ‘Dream’ eau
de toilette and 1 152 GAP ‘Heaven’
eau de toilette sprays (in 100ml bottles) for a total price of $12
692 (R129 507,84),
for immediate delivery. On 12 November 2002 Marci
Friedman sent Clicks the respondent’s commercial invoice for 2
200 GAP
scents EDT with a total price of $11 000.
On 6 January 2003
Orsolya Nadasdi sent a letter to Melony Roux of Clicks attaching
‘Declaration of Sales’ and ‘Sales
Documentation’
forms and requesting that they be filled in, signed and returned to
her by 22 January 2003. On 11 February
2003 Melony Roux signed the
Declaration of Sales and returned it to Osorlya Nadasdi together with
the Sales Document and photographs
showing GAP perfumery displayed
for sale. The Declaration of Sales reads as follows –
‘
Declaration
of Sales
I, Melon
y
Roux, of Clicks New Holdings Ltd, cnr Searle and Pontac Streets, PO
Box 5142, Cape Town 8000, Cape Province, South Africa, do
solemnly
and sincerely declare as follows:
INTRODUCTION
1. I am the Buyer
of Clicks New Holdings Ltd (“the Company”), a distributor
of personal care in South Africa. I have
been responsible for the
Company’s dealings with GAP, Inc and its affiliates (
“GAP,
Banana Republic and Old Navy”) since 2002. During that time,
the Company has sold merchandise bearing the brands
of GAP Inc and
its affiliated companies (including and without limitation GAP and
Banana Republic) in South Africa for resale within
South Africa. I
have worked in the retail industry for 9 years and specifically in
the personal care field for 2 years. I am
duly authorised to make
this Declaration. Unless otherwise stated, I make this Declaration
from facts and matters within my knowledge
or from the books and
records of the Company.
SALE
OF MERCHANDISE
2. Attached hereto is a true and
correct copy of an ISP Distributor Sales Documentation form. I
personally filled out this form
and the information contained in it
is true and correct.
3. Also attached hereto are true and
correct copies of invoices, sales reports, etc. for sales indicated
on the form referenced
in paragraph 2.
4. Attached hereto are true and
correct copies of pictures showing the sale of GAP, BANANA REPUBLIC
and OLD NAVY brand products
in famous clothes stores in Belgium
during 200_.’
The copies of
invoices and sales reports are not attached and the reference to
‘famous clothes stores in Belgium’ is
not explained. The
document was obviously prepared by the respondent with a view to
demonstrating use of the GAP mark on personal
care products but there
is no reference to the sale of GAP personal care products.
The attached
distributor sales information reflects the sale of 11 bottles
(i.e.100ml each) of GAP ‘Heaven’ EDT spray
and 10 bottles
(i.e. 100ml each) of GAP ‘Dream’ EDT spray at Clicks
stores at various places in South Africa. The
photographs depict GAP
personal care products apparently on display.
In February 2003
O
rsolya
Nadasdi continued to communicate with Melony Roux
inter
alia
about
promotional material but there was a break in communications when
Melony Roux left Clicks. In June and July 2003 Orsolya
Nadasdi
communicated with Kelly Poerstamper of Clicks about point-of-sale
material and sales of the GAP personal care products
and Ms
Poerstamper sent Nadasdi a schedule of the Clicks stores where Clicks
offered GAP perfumery for sale. The schedule reflects
that initially
Clicks offered the products in 52 stores but by July 2003 Clicks was
offering the GAP products at more than 100
stores throughout South
Africa. Orsolya Nadasdi states that after this Clicks inexplicably
did not respond to further communications.
She does not attach copies
of correspondence between the respondent and Clicks in support of
this statement.
[21
] As
far as the second period is concerned the respondent relies on the
affidavits of Julie Gruber, Marco Cicoria, the Group Marketing
and
Merchandising Director of Stuttafords, and Herve Bouillonnec, the
International Director for GAP and Banana Republic Beauty
Care
Products at Inter Parfums USA LLC, a company incorporated in the
State of New York, USA, which distributes and retails perfumery,
cosmetics and body care products throughout the world. Once again
the applicants cannot and have not disputed the allegations
in the
affidavits.
[22
] The
relevant facts may be summarised as follows:
(1) In 2006, after
the judgment of the Supreme Court of Appeal in
AM
Moolla Group Ltd and Others v The Gap Inc and Others
2005
(6) SA 568
(SCA)
the
respondent appointed Stuttafords as an authorised distributor of GAP
merchandise in South Africa. The respondent has not attached
a copy
of the marketing and distribution agreement entered into between the
respondent and Stuttafords. (This agreement obviously
did not deal
with GAP personal care products as the sale of these products was
only discussed at the meeting in August 2007 referred
to below.)
(2) Early in 2007
Stuttafords commenced selling GAP clothing at three Stuttafords
stores in Johannesburg and Cape Town. The GAP
clothing proved to be
extremely popular. In the first year after sales commenced
Stuttafords sold goods to the value of about
R18 million. Marco
Cicoria describes the sales as ‘phenomenal’.
(3) In August 2007
Marco Cicoria and Alfred Emdon, the CEO of Stuttafords, met
representatives of the respondent, including Nina
King, to discuss
the purchase of GAP apparel. During their meeting the Stuttafords
representatives initiated a discussion about
Stuttafords selling the
respondent’s GAP body care products and this led to an exchange
of correspondence about the supply
of the products. Eventually, on 3
October 2007, Mareli Coetzee of Stuttafords e-mailed an order for 800
units of GAP body care
products to Nina King, who, on the same day,
thanked her for the order and said: ‘As soon as we have
finalized the logistics
process we will process your order and will
let you know when to expect it in country’. On 7 December 2007
the respondent
prepared a Purchase Order for the goods. It states
that the order date is 7 December 2007and contains a note ‘Do
not ship
before: Dec 01, 07’ and ‘Anticipated Ship: Feb
22, 08 FOB’. The vendor copy print date is 20 February 2008.
The
witness, Marco Cicoria, does not say when the purchase order was
received in South Africa.
(4) As a result of
logistical problems and the resignation of Nina King, who had been
liaising with Stuttafords, the shipment of
this order was delayed.
The products did not arrive in South Africa until the end of April
2008 and only went on sale from 6 May
2008. By September 2008
Stuttafords had sold GAP personal care products to the value of R200
000.
(5) Stuttafords
intends to continue sourcing and selling GAP body care, perfumery and
other class 3 products as part of its distributorship
in South
Africa.
[23
] With
regard to the respondent’s intention when it applied for
registration of the class 3 mark I am of the view that the
evidence
of Mr. Fisher in paragraph 7.3 of the founding affidavit in support
of the respondent’s expungement application
(JG3) is
destructive of the requisite intention to use the mark. The
affidavit was deposed to in 1999, five years after the application
for registration of the trade mark, and shows that the respondent’s
intention in 1999 was to enter the South African market
when it
considered it commercially appropriate to do so. Accordingly when it
applied for registration of the mark in 1994 the respondent
could not
have regarded the mark as a mark ‘to be definitely used’
or could not have resolved ‘to use it in the
immediate future
upon or in connection with goods’. It shows that the intention
to use was an ‘uncertain or indeterminate
possibility’.
This view is supported by the surrounding circumstances. The
respondent only commenced advertising and selling
the GAP class 3
products elsewhere in the world in 1994 and between then and 2002
sold them mainly in the developed economies of
the United States of
America, Canada, the United Kingdom, France, Germany and Japan as
well as in a few other countries despite
the fact that the GAP class
3 mark was registered in 39 countries. In South Africa the respondent
did not pertinently advertise
its GAP personal care products nor did
it sell any of these products either at the time of the application
or thereafter for a
period of 8 years. It only took steps to sell
the products in South Africa after November 2001 when its attorney in
South Africa
received the applicants’ attorney’s letter
demanding that the mark be removed from the register.
[24
] This
conclusion is not the end of the matter. The second requirement
under s 27(1)(a) of the Act is whether there was any
bona
fide
use
of the class 3 mark.
[25
] The
applicants contend that the facts fall short of establishing that
there was
bona
fide
use
of the class 3 mark. It is submitted that from the chronology,
particularly the letter of demand in November 2001 followed
by the
sudden attempts in February and April 2002 to find distributors for
the goods in South Africa, the inadequate attempts to
get the class 3
goods onto the South African market, the failure to provide
promotional material when requested, the limited number
of personal
care products sold in South Africa and the sudden and inexplicable
cessation of sales by Clicks the inference is warranted
that the sale
of class 3 products by Clicks was not
bona
fide
use
of the class 3 mark. Use, according to the argument, was simply for
the purpose of saving the mark: i.e. an improper purpose:
and not
for protecting, facilitating and furthering the trading in the class
3 products. As far as sales of GAP personal care
products by
Stuttafords are concerned the applicants contend that there were no
sales by Stuttafords within the relevant 5 year
period.
[26
] The
applicants accept that they have not disputed the respondent’s
evidence of use and that they cannot request the court
to reject any
of that evidence. Nevertheless they ask the court to draw inferences
from the respondent’s evidence (and the
lack of evidence) that
the respondent’s use of the GAP mark on personal care products
was not
bona
fide
.
In
Gulf
Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk
1963
(2) SA 10
(T)
at
27F-28D the court
a
quo
drew
inferences from the respondent’s evidence and concluded that
the facts did not show that the respondent made
bona
fide
use
of the trade mark. On appeal this method of reasoning was not
criticised and the finding was not disturbed. See
Rembrandt
(Edms) Bpk v Gulf Oil Corporation
1963
(3) SA 341
(A)
at
351C-G where the court said:
‘On this
evidence it is difficult to escape the conclusion that in all
probability the appellant had no serious intention
of carrying on any
trade, as a commercial enterprise, in lubricating oil under this
mark, and that such use as the appellant had
made of it, had no other
purpose than to defeat the proceedings brought by the respondent.
That, in substance, is the conclusion
at which the court
a
quo
arrived,
and I am not persuaded that it erred in doing so.
Counsel for the
appellant referred to decisions in England and in the Netherlands in
support of the contention that a single sale
under a trade mark may
be sufficient to constitute user. I shall presume for present
purposes that the sales and advertisements
mentioned above satisfy
the requirement of user in respect of lubricating oil. The question
is whether the evidence shows that
the user was not
bona
fide
in
the sense contemplated in sec. 136. I do not propose to attempt a
comprehensive definition of what the expression “no
bona
fide
user”
means in this section. Whatever the full meaning of the phrase may
be, it seems clear that user for an ulterior purpose,
unassociated
with a genuine intention of pursuing the object for which the Act
allows the registration of a trade mark and it protect
its use,
cannot pass as a
bona
fide
user.
(Cf.
Electrolux
Ltd. v Electrix Ltd. and Another,
71
RPC 23
).’
[27] In
Bates
& Lloyd Aviation (Pty) Ltd and Another v Aviation Insurance Co
1985
(3) SA 916
(A)
at 939F-940B, Nicholas JA discussed reasoning by inference:
‘Inference,
it was observed by Lord WRIGHT in
Caswell
v Powell Duffryn Associated Collieries Ltd
[1939]
3 All ER 722
(HL)
at 733, must be carefully distinguished from conjecture or
speculation:
“There
can be no inference unless there are objective facts from which to
infer the other facts which it is sought
to establish. In some cases
the other facts can be inferred with as much practical certainty as
if they had been actually observed.
In other cases the inference does
not go beyond reasonable probability. But if there are no positive
proved facts from which the
inference can be made, the method of
inference fails and what is left is mere speculation or conjecture”
(This passage has frequently been
quoted by this Court ...)
From both
inference and speculation must be distinguished hypothesis. This is a
theory advanced in explanation of the facts in
evidence as a basis
for an inference. To be logically sound, it must be consistent with
all the proved facts, and it must not postulate
facts which have not
been proved. It may be advanced by a legal representative or, where
the subject is a technical one, by an
expert witness. The process of
reasoning by inference frequently includes consideration of the
various hypotheses which are open
on the evidence and in civil cases
the selection from them, by balancing probabilities, of that
hypothesis which seems to be the most natural and plausible (in the
sense of acceptable, credible or suitable). Cf
Ocean
Accident and Guarantee Corporation Ltd V Koch
1963 (4) SA 147
(A
)
at 159.’
See
also
the
cases referred to in
Skilya
Property Investments (Pty) Ltd v Lloyds of London
2002
(3) SA 765
(T)
at 780H-781D.
[2
8] The
applicants argue that the evidence does not support an inference that
the use of the class 3 mark was
bona
fide
.
The question to be answered is whether the most natural or plausible
inference is that the use was not
bona
fide
or that the most natural or plausible inference is that the use was
bona
fide
.
These are the only two hypotheses.
[29] The evidence
pertaining to the sale of GAP personal care products to Clicks cannot
be disputed. At face value it creates the
impression that the
respondent genuinely wished to sell these products in South Africa.
In February and April 2002 the respondent
approached four major South
African retailers to market in South Africa the respondent’s
personal care products under the
GAP trade mark. The respondent’s
approaches to three of the retailers proved to be unsuccessful but,
eventually, in October
2002, the respondent entered into an agreement
with one, Clicks, and in October 2002 Clicks placed one order for
2,300 units of
the respondent’s products. Clicks first stocked
the personal care products at 52 of its stores and by the end of June
2003
Clicks stocked the GAP personal care products at approximately
100 of its stores. However between January and May 2003 Clicks sold
a
total of 21 bottles (i.e.100ml each) of the GAP personal care
products. This is a tiny number of bottles and an insignificant
volume.
[30] On closer
examination there are significant gaps in the narrative and a
significant lack of records reflecting sales which
should be
available. When it applied for registration of the class 3 mark the
respondent did not have the requisite
bona fide
intention to use the mark. Thereafter for a period of eight years,
from 1994 to 2002, the respondent did not use the mark in South
Africa. There is no explanation for the failure to sell GAP personal
care products in South Africa during that period which is
entirely
consistent with the absence of a bona fide intention to use the mark
when applying for registration. There is no other
explanation for the
sudden attempts to find a distributor for the goods in South Africa
in 2002 than the fact that the applicants
had threatened to institute
expungement proceedings on the ground of non-use. After the
respondent decided to find a distributor
in South Africa for its GAP
personal care products the respondent did not pertinently advertise
or promote the goods in South Africa.
There is no explanation for the
respondent’s failure to advertise or promote its GAP personal
care products in South Africa.
This is entirely consistent with a
lack of a bona fide intention to establish a market in South Africa
for its GAP personal care
products. There was also an unexplained
lack of urgency in providing Clicks with promotional material and by
July 2003 it had
not yet provided Clicks with point of sale material
as it had undertaken to do. This is also consistent with a lack of a
genuine
intention to establish a market for the products in South
Africa. There is no explanation for the respondent’s failure to
establish the cause of Clicks’ sudden loss of interest in
continuing to sell the GAP personal care products and to deal with
the problem. There is not even any evidence that the respondent
attempted to do so. Without any supporting evidence it cannot
be
accepted that this was inexplicable-see
A
M Moolla Group Ltd and Others v The GAP Inc
and
Others
2005
(6) SA 568
(SCA)
at para [31]. A large company with a genuine intention of
establishing a market for its goods in a new country would not let
the
matter rest. There is a complete absence of any correspondence
dealing with the break-down of the relationship. Finally there
was
no use of the mark from May 2003 until August 2007 and there is no
explanation for the failure to do anything to market the
GAP personal
care products during that period. Looking at all these facts and
circumstances the most natural and plausible inference
is that the
sale of the goods to Clicks was done for an ulterior purpose: i.e.
simply to save the class 3 mark.
[
31] As
far as Stuttafords is concerned, it is clear that Stuttafords did not
sell any GAP personal care products in South Africa
during the
relevant period. Although Stuttafords sent an order for GAP personal
care goods to the respondent on 3 October 2007
the respondent did not
process the order until 7 December 2007 (i.e. after the relevant
period), the goods were despatched early
in February 2008 and only
arrived on the shelves of the Stuttafords stores in May 2008. In
argument before this court the respondent
contends that this is of no
moment because the respondent used the GAP mark in ‘other
relation’ to the class 3 products.
According to the argument
this occurred during the negotiations to extend the range of good
marketed by Stuttafords in South Africa
to include personal care
goods and when the respondent executed the order for the goods and
issued the purchase order describing
the goods.
[32] There are two
difficulties with the argument. First, the point was not relied upon
in the respondent’s answering affidavits
(Julie Gruber simply
referred to these matters by way of background and in order to
establish her evidence that the respondent
always had the intention
to use the class 3 mark in South Africa) and no attempt was made to
establish that such use was in South
Africa. It is trite that the
affidavits formulate the issues of fact, contain the evidence upon
which the parties wish to rely
and must set out clearly the issues
and averments in support of the parties’ cases – see
Radebe
v Eastern Transvaal Development Board
1988
(2) SA 785
(A)
at 793C-H:
Transnet
Ltd v Rubinstein
2006 (1) SA 591
(SCA)
para 28;
Minister
of
Land
Affairs and Agriculture v D & F Wevell Trust
2008
(2) SA 184
(SCA)
.
Although a party in motion proceedings may advance legal arguments in
support of the relief or defence relied upon by it even
where such
arguments are not pertinently mentioned in the papers this must arise
from the facts established – see
Van
Rensburg v Van Rensburg en Andere
1963
(1) SA 505
(A)
at 509E-510B;
Cabinet
for the Territory of South West Africa v Chikane
1989
(1) SA 349
(A)
at 360F-G. The court will only decide the point where it is satisfied
that all the relevant facts are before the court and that
there will
be no injustice – see
Minister
van Wet en Orde v Matshoba
1990
(1) SA 280
(A)
at
285E-F. In the present case the point has not been canvassed in the
papers and, as a result, neither party dealt with the issue
in its
heads of argument. It was raised for the first time during argument
before this court. (The applicants also attempted to
argue a point
not dealt with in the affidavits: i.e. that the respondent had not
established that its authorised user was in fact
authorised to use
the trade mark: but did not persist with the argument when the
question of whether it was properly canvassed
was debated.) Even if
it is accepted that the matter was pertinently raised, it appears
that the negotiations took place in New
York and that the mark was
used once in an e-mail to Stuttafords and once in an order form. It
is not clear whether the latter
document was seen in South Africa.
In my view the respondent has not established
bona
fide
use
in respect of the goods sold to Stuttafords.
[3
3] The
applicants are therefore entitled to relief in respect of both trade
marks.
[3
4] I
record that even if the respondent had proved
bona
fide
use
of the class 3 mark I would not have accepted that as use of the
class 30 mark in terms of s 31 of the Act. In argument the
respondent’s counsel conceded that he was unable to advance any
sensible reasons why this should be done. The mark has never
been
used by the respondent or its predecessor. When the previous
application was brought in 2002 the respondent relied on s 31
of the
Act and it does so again in these proceedings. The goods covered by
the mark are far removed from the goods in respect
of which the
respondent has an interest and it has not even said that it may use
the mark in the future. In my view there is no
good reason for
saving the mark.
[35] The parties
prepared a record of 1 471 pages. The evidence relevant to the issues
is contained in not more than about 200 of
these pages. The
respondent gave notice that it would apply to strike out the
irrelevant evidence in the applicants’ founding
affidavit but
did not argue this as a separate issue at the hearing. The
respondent was also guilty of incorporating irrelevant
evidence in
its answering affidavit. At the end of the hearing the parties
agreed that a number of passages in the affidavits
and a number of
annexures should be struck out. These are listed in a letter from
the applicants’ attorney to the court
dated 18 May 2010 which
is marked ‘A’ and filed at pages 1472-1473. The passages
and documents listed run to about
530 pages. In my view this
agreement does not cover all the matter which is irrelevant. A large
proportion of the record was
not referred to during argument and was
simply ignored. For present purposes it is not necessary to identify
all the irrelevant
passages and annexures as I am satisfied that both
parties are responsible for the state of the record and that the
parties should
each bear the costs of preparing their own affidavits
and that these costs should not be included in the costs of the
application.
I shall order that with the exception of the first 10
pages of annexure JG3 to the answering affidavit of Julie Gruber
which contains
paragraph 7.3 and is relied upon by the applicants all
the passages and documents referred to in exhibit ‘A’ be
struck
out. As pointed out earlier paragraph 7.3 of annexure JG3 was
relied upon by the applicants as direct evidence to show that the
respondent did not have the
bona
fide
intention
to use the GAP mark when it applied for registration of the class 3
mark. The other pages are retained so that paragraph
7.3 can be read
in context.
Order
[3
6] I
The following registered trade marks are removed from the
register and the Registrar is directed to effect the necessary
rectification: Trade Mark number 1994/10423 and Trade Mark number
1990/05434;
II The following passages in the
record and the annexures thereto are struck out:
(1)
Founding
affidavit of Ahmed Sadek Vahed
Paras 10, 21-72, 82-94 and 156
(2)
Annexures
to founding affidavit of Ahmed Sadek Vahed
ASV8, ASV8A.1-ASV8A.9 and
ASV10-ASV17
(3)
Answering
affidavit of Julie Gruber
Paragraphs 7.3, 7.4, 12, last
sentence of paragraph 16, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30 and
39
(4)
Annexures
to answering affidavit of Julie Gruber
Pages 11-78 of JG3, JG4 and JG5
(5)
Replying
affidavit of Ahmed Sadek Vahed
The portion of paragraph 65
commencing with the words ‘As pointed out by Gruber’,
paragraphs 67, 69, 70, 71, 72, 75,
a portion of paragraph 77
commencing with the words ‘I also dispute’, paragraphs
78, 79, 80, 81, 85, 87, 93, 94, 95,
98-122 and 129
(6)
Annexure
to replying affidavit of Ahmed Sadek Vahed
ASV62;
III The parties are to bear their own
costs of preparing their affidavits and these costs shall not form
part of the costs of the
proceedings;
IV
The first respondent is ordered to pay the costs of the application
including the costs consequent upon the employment of two
counsel.
______________________
B.R. SOUTHWOOD
JUDGE OF THE HIGH COURT
CASE NO:
11670/08
HEARD
ON: 17 May 2010
FOR
THE APPLICANTS: ADV. A. FINDLAY SC
ADV.
O.A. MOOSA SC
ADV. H.
GANI
INSTRUCTED
BY: Ms. M. Jacobs of Macrobert Inc.
FOR
THE RESPONDENT: ADV. C.E. PUCKRIN SC
ADV.
R. MICHAU
ADV.
I. JOUBERT
INSTRUCTED
BY: Ms. N. Bond of DM Kisch Inc.
DATE
OF JUDGMENT: 17 June 2010