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[2017] ZAGPPHC 8
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Arbiter Di Marciano Alfonso & C.S.N.C. v Adamo Exclusive Mens Wear CC t/a Papoutsi (45297/2014) [2017] ZAGPPHC 8 (16 January 2017)
.REPUBLIC
OF SOUTH AFRICA
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
DIVISION, PRETORIA
CASE
NO.: 45297/2014
Reportable:
No
Of
interest to other judges: No
Revised.
16/1/2017
In
the matter between:
ARBITER
DI MARCIANO ALFONSO &
C.S.N.C. APPLICANT
and
ADAMO
EXCLUSIVE MENS WEAR CC t/a
PAPOUTSI RESPONDENT
Heard:
5 February 2016
Delivered
25 January 2017
JUDGMENT
A.
A. LOUW J
Introduction
[1]
This is an application for interdictory relief against the respondent
on two bases: in terms of the provisions of section 35
of the Trade
Marks Act, 1994 of 1993 (the Act) for an order restraining the
respondent from infringing the applicant's alleged
well-known trade
mark ARBITER, and in addition an order restraining the respondent
from passing off its goods as being that of
the applicant or being
connected in the course of trade with the applicant.
[2]
The applicant in addition seeks a costs order against the respondent.
The
parties
[3]
The applicant is Arbiter Di Marciano Alfonco & C.S.N.C., an
Italian company of Via Stadia, 8, Santa Maria A Vico (Caserta)
81028,
Italy.
[4]
The respondent is Adamo Exclusive Mens Wear CC t/a Papoutsi, a close
corporation conducting business at Shop 11, Kine Centre,
cnr
Commissioner and Kruis Streets, Johannesburg.
[5]
The applicant conducts the business of producing, marketing and
selling clothing, footwear and headgear in Italy and other countries,
including in the Republic of South Africa.
[6]
The respondent was until the beginning of 2012 an importer and
distributor of the applicant's footwear sold under the applicant's
well-known ARBITER trade mark.
The
application
[7]
As stated above, the bases for the restraining orders sought are
two-fold, i.e.
(a) In terms of the
provisions of section 35 of the Act; and
(b) a reliance on
the applicant's common law rights to prevent the passing off of the
respondent's clothing and footwear by
the use of a get-up, which
includes the trade mark ARBITER, and which is confusingly or
deceptively similar to that of the applicant's
get-up for its goods,
which includes the applicant's ARBITER trade mark.
The
principles applicable in terms of section 35 of the Act
[8]
The Convention of Paris for the Protection of Industrial Property of
1883, as revised, (the Paris Convention) in article 6(bis)
thereof
obliges countries of the Union to introduce legislation in their
country that protect well-known marks originating from
other
countries of the Union that are found to be well-known in that
country.
[9]
Section 35 of the Act complies with the obligations imposed upon
South Africa by article 6(bis) of the Paris Convention.
[10]
Section 35 of the Act provides as follows:
"(1) References
in this Act to a trade mark which is entitled to protection under the
Paris Convention as a well-known trade
mark, are to
a
mark
which is well known in the Republic as being the mark of-
(a)
a person who is a national of a convention country; or
(b)
a
person who is domiciled in, or has
a
real and
effective industrial or commercial establishment in, a convention
country,
whether or not such
person carries on business, or has any goodwill, in the
Republic.
(1A) In determining
for the purposes of subsection (1) whether
a
trade mark is
we/I-known in the Republic, due regard shall be given to the
knowledge of the trade mark in the relevant sector of
the public,
including knowledge which has been obtained as
a
result of the
promotion of the trade mark.
(2) A reference in
this Act to the proprietor of such
a
mark shall be construed
accordingly.
(3) The proprietor of
a
trade mark which is entitled to protection under the Paris
Convention as
a
well-known trade mark is entitled to restrain
the use in the Republic of
a
trade mark which constitutes, or
the essential part of which
constitutes,
a
reproduction, imitation or translation of the well-known trade
mark in relation to goods or services which are identical or similar
to the goods or services in respect of which the trade mark is well
known and where the use is likely to cause deception or confusion.
(4) Where, by virtue
of section 10 (8), the authorization of the competent authority of
a
convention country or an international organization is required
for the registration of
a
mark as
a
trade mark, such
authority or organization is entitled to restrain the use in the
Republic of such
a
mark without such authorization."
[11]
The provisions of sections 35(3) of the Act are of particular
relevance in the present matter in that it is available to the
proprietor of a well-known trade mark whether or not that proprietor
carries on business or has any goodwill in the Republic.
[12]
A party, for a successful reliance on the aforesaid provisions of
section 35(3) is obliged to show that:
(a) the mark is
well-known in the Republic;
(b) the proprietor
of that mark is a national of or domiciled or established, i.e. has a
real and effective industrial or
commercial establishment, in a
Convention country;
(c) there is a
reproduction, imitation or translation of his well-known trade mark;
(d) use is made
thereof in relation to goods or services which are identical or
similar to his goods or services; and
(e) such use being
likely to cause deception or confusion in the relevant market.
[13]
In
MacDonald's
Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd et al
[1]
the Appellate Division (as it then was known) held that a mark is
well-known in the Republic if it is well-known to persons interested
in the goods or services to which the mark relates.
[14]
South Africa is a signatory to the Paris Convention and Italy is a
convention country as defined in article 6(bis) of the Paris
Convention.
The
facts relating to section 35(3) of the Act
[15]
The applicant was established in Italy during 1954 and continues to
do business.
[16]
The applicant is the designer and manufacturer of inter alia a range
of footwear and clothing accessories which it produces
and sells
under the trade mark ARBITER in Italy and worldwide.
[17]
The applicant is the proprietor of the trade mark ARBITER, it also
being the registered proprietor of the said trade mark in
Italy.
[18]
It is common cause that the respondent's mark ARBITER is identical to
that of the applicant.
[19]
Furthermore, it is common cause that the respondent's ARBITER trade
mark is applied to identical goods to that of the applicant.
[20]
The applicant argues that its ARBITER trade mark is well-known in the
Republic on the basis that the evidence that will follow.
[21]
In 1983 the applicant introduced its footwear under the ARBITER trade
mark in the Republic via various importers and distributors
from
South Africa, including the respondent.
[22]
It is remarkable to me that the detail of wholesale and retail
clients and exposure to South Africans clients is very vague.
I quote
paragraph 12 of the founding affidavit:
"In 1983, over 30
years ago, the applicant's footwear under the trade mark ARBITER, was
introduced into South Africa via,
inter alia,
importers and
distributors and, over the years, the orders in South Africa have
increased significantly.
The applicant's contact with and
exposure to South African
clients (mostly
wholesale and retail clients, as the applicant does
not deal directly with the end consumer of
its products), is
frequent, both at official events. such as the International
Fair of Footwear Milan (MICAM) and at the
offices of the applicant
.
In addition my son, Mr. Marciano Maurizio, conducts numerous business
trips and working visits to South Africa to behalf of the
applicant
to promote its footwear and clothing products sold under its
ARBITER trade mark. By way of example, my son and
Mrs Maria Cristina
Marciano visited South Africa in August 2013 for,
inter alia,
the
purpose of meeting with our distributor Mr. Theodosios Joannou
Constantinides and some clients."
[23]
What the applicant attaches are hundreds of pages of promotional
material in Italian as well as Italian invoices and letters
of
credit. This is inadmissible evidence.
[24]
Detailed evidence is necessary to establish that a mark is well-known
such as the following:
24.1. The turnover of the
business in South Africa over the years.
24.2. In which
geographical areas are the goods sold, in which shops, malls or
retail centres?
24.3. Which groups or
people purchase the products?
[25]
The applicant has set out its evidence in a cursory, vague and
sketchy form. There is far too less detail to gather that
the
applicant's product is well-known, to satisfy the requirements of
section 35 of the Act. There is no evidence that the goods
were sold
outside Gauteng. What would have been valuable would have been a
market survey of the recognisability of the products.
[26]
What goes for the section 35 application means the fate of the
passing off the application as well. There is insufficient evidence
relating to reputation or goodwill.
Order
The
application is dismissed with costs, including the costs of two
counsel.
___________________
A.A.
LOUW
Judge
of the High Court
[1]
1997(1) SA 1(A)