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[2017] ZAGPPHC 7
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Arbiter Di Marciano Alfonso & C.S.N.C. v Adamo Exclusive Mens Wear CC t/a Papoutsi (55428/2015) [2017] ZAGPPHC 7 (16 January 2017)
REPUBLIC
OF SOUTH AFRICA
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
CASE
NO.: 55428/2015
Reportable:
No
Of
interest to other judges: No
Revised.
In
the matter between:
ARBITER
DI MARCIANO ALFONSO &
C.S.N.C. OPPONENT
and
ADAMO
EXCLUSIVE MENS WEAR CC t/a PAPOUTSI APPLICANT
FOR THE
TRADE
MARK (RESPONDENT)
Heard:
5 February 2016
Delivered
25 January 2017
JUDGMENT
A.A.LOUW
J
Introduction
[1]
This is an opposition to an application for the registration in the
trade marks register of the mark
ARBITER
in class 25 in the
name of ADAMO EXCLUSIVE MENSWEAR CC
tla
Papoutsi (the
applicant).
[2]
This judgment has to be read together with the judgment in case
number 45297/2014, to which I shall refer as the "interdict
judgment". The applicant in the interdict is the opponent to
registration herein whilst the respondent in the interdict is
the
applicant for registration.
[3]
The registrar in terms of section 59(2) of the Trade Marks Act, 194
of 1993 (the Act) referred the opposition proceedings to
this court.
[4]
The applicant on 20 June 2011 under application 2011/14756 applied
for the registration of the mark
ARBITER
in class 25. The
application was accepted on 11 April 2012, and advertised for
opposition purposes in the Patent and Trade Mark
Journal dated 27
June 2012.
[5]
After extensions of the time period within which the opposition to
the said application for registration of the
ARBITER
mark was
to be filed, the opponent on 12 December 2012 filed its opposition to
the applicant's application for the registration
of the mark
ARBITER
as a trade mark.
[6]
On 6 August 2012 the opponent also applied for registration of the
trade mark ARBITER in classes 18 and 25.
The
grounds of opposition
[7]
The opposition to the applicant's application for registration of the
mark as a trade marks is premised upon the provisions
of the
following sections of the Act:
7.1 section 10(3) of the Act, namely a
mark in relation to which the applicant for registration has no
bona
fide
claim to proprietorship;
7.2 section 10(6) of the Act, namely a
mark which, on the date of application for registration
thereof, or,
where appropriate, of the
priority claimed in respect of the application for registration
thereof, constitutes,
or the essential part of which constitutes, a
reproduction, imitation or translation of a trade mark which is
entitled to protection
under the Paris Convention as a well-known
trade mark within the meaning of section 35 (1) of this Act and which
is used for goods
or services identical or similar to the goods or
services in respect of which the trade mark is well-known and where
such use is
likely to cause deception or confusion;
7.3 section 10(7) of the Act, namely a
mark the application for registration of which was made
mala fide;
7.4 section 10(12) of the Act, namely
a mark which is inherently deceptive or the use of which would be
likely to deceive or cause
confusion, be contrary to law, be
contra
bonos mores,
or be likely to give offence to any class of
persons; and
7.5 section 10(16) of the Act, namely
a mark which is the subject of an earlier application as contemplated
in subparagraph (15),
if the registration of that mark is contrary to
existing rights of the person making the later application for
registration as
contemplated in that paragraph.
[8]
In the interdict judgment I have held that the opponent had not
proved that its mark is well-known and also that the goodwill
had not
been properly established in order to sustain an interdict on the
basis of passing off. In this application there is the
additional
allegation that the opponent sells about €758 000 of ARBITER
branded products to South Africa per year. However
this allegation is
made only in the replying affidavit and I therefore do not place
reliance thereon. As I have held in the interdict
judgment the
goodwill had to be properly proven by
inter alia
detailing the
turnover of business with South African customers over the years.
[10]
Because of my findings in the interdict application most of the
grounds of opposition can therefore not succeed. However the
opposition based on section 10(7) of the Act deserves further
attention.
[11]
It is not in dispute that the applicant was for many years, until as
recently as 2012, an importer and distributor of the opponent's
ARBITER branded goods neither is it in dispute that the opponent's
business under the ARBITER mark started as long ago as 1954.
In the
answering affidavit herein the applicant states that there are other
parties other than the opponent who design and manufacture
ARBITER
branded footwear. The applicant does not state who these other
parties are.
[12]
In my view it is sufficiently established that the opponent was the
originator of ARBITER branded goods and any other manufactue
is
therefore not manufacture of the original genuine goods but
constitutes copying.
[13]
I therefore find that having for many years imported and distributed
the opponent's ARBITER goods the applicant has now started
to source
counterfeit goods from another, unnamed, manufacturer.
[14]
In adopting this approach and then for the applicant to apply for
registration of the mark being well aware of the opponent's
rights,
can only be described as ma/a
fide.
[15]
I therefore hold that the ground of opposition based on section 10(7)
of the Act has to succeed and that the applicant's application
for
registration has to be refused.
Order
Application
number 2011/14756 ARBITER in class 25 in the name of the applicant is
refused with costs.
__________________
A.
A. LOUW
Judge
of the High Court