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[2015] ZAGPPHC 389
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Pandora A/S v Truworths Ltd (72261/13) [2015] ZAGPPHC 389; 2015 BIP 268 (GP) (3 June 2015)
IN
THE HIGH COURT OF SOUTH AFRICA
(GAUTENG
DIVISION, PRETORIA)
Case
No: 72261/13
DATE:
3/6/2015
In
the matter between:
PANDORA
A/S
Applicant
and
TRUWORTHS
LTD
Respondent
JUDGMENT
D S
FOURIE, J:
[1]
This is an application to expunge trade
mark registration No 1990/3847 ESSENCE from the Trade Marks
Register in terms of
section 27(1)(a)
and (b) of the
Trade Marks
Act No 194 of 1993
. It is common cause that the applicant is an
interested person and has the necessary
locus
standi
to bring this application.
The application is opposed by the respondent.
BACKGROUND
[2]
The trade mark in question is ESSENCE in
Class 14 in respect of:
"Precious
metals and their alloys and goods in precious metals or coated
therewith, jewellery, precious stones; horological
and other
chronometric instruments; parts, fittings, components and accessories
for all the aforegoing”
.
[3]
The applicant is a corporation duly
incorporated under the laws of Denmark. It has designed,
manufactured and marketed its
hand-finished jewellery since 1982.
Today, the applicant’s Pandora jewellery is sold in over 70
countries worldwide,
including South Africa. The applicant
intends to market and sell a specific jewellery collection under the
trade mark ESSENCE
in South Africa in the near future.
[4]
The respondent is one of South Africa’s
leading fashion retailers with over 600 stores in South Africa.
The merchandise
offered by the respondent cover a wide range of
fashion-related items, such as clothing, footwear, head gear,
make-up, fragrance
products and jewellery. The respondent is
the trade mark proprietor of Trade Mark Registration
No 1990/3847 ESSENCE
in Class 14 and according to the
answering affidavit this brand has formed part of the respondent for
the past 23 years.
[5]
The applicant contends that the respondent
has not used the ESSENCE trade mark on goods in Class 14, whereas the
respondent’s
answer is briefly that it is a leading fashion
retailer and has used the ESSENCE trade mark on goods in Class 14.
THE APPLICABLE LAW
[6]
In terms of
section 27(1)(a)
and (b) of the
Act a Court may, on the application by any interested person, remove
a trade mark from the register if:
■
the
trade mark was registered without any
bona
fide
intention to use it in relation to
the goods for which it is registered and there has in fact been no
bona fide
use of the trade mark in relation to those goods up to a date three
months prior to the date of the application (ss (1)(a)); or
■
that
up to a date three months prior to the date of the application, there
has been no
bona fide
use thereof in relation to the goods in respect of which the mark is
registered for a continuous period of five years or longer
(ss
(1)(b)).
[7]
Once an applicant has brought itself within
the parameters of
section 27(1)(a)
or (b) of the Act,
section
27(3)
imposes an onus on the proprietor of the trade mark to prove
relevant use of the trade mark. This onus is not a mere
shifting
of the evidentiary burden, but has the burden of a true onus
(
Scientific Chemicals (Pty) Ltd v Liqui
Seal (Pty) Ltd et al
2002 BIP 85 (T) at
p 88).
[8]
The concept of
bona
fide
use has been the subject of a
number of judgments in our law. For present purposes it
suffices to say 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 trade in such goods, and
not for some
other, ulterior object” (
Gulf Oil
Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk
1963 (2) SA 10
(T) at 24E).
[9]
It is trite that the amount of use required
to defeat an application for expungement can be small, provided that
such use is
bona fide
(cf
Wistyn Enterprises (Pty) Ltd v Levi
Strauss & Co
1986 (4) SA 796
(T) at
816H-J). What the respondent is therefore required to
demonstrate is “clear and unambiguous proof of relevant
use
during the relevant period” (
New
Balance Athletic Shoe Inc v Dajee & Others
2012 BIP 102 (SCA) at par 23).
THE EVIDENCE
[10]
According to the founding affidavit
Internet searches were conducted in respect of the trade mark
ESSENCE, but as these searches
did not yield any clear results, an
investigator was instructed to determine whether the respondent was
using, or had ever used,
the ESSENCE mark in relation to the goods
for which it has been registered.
[11]
It is alleged that a customer service
consultant of the respondent has indicated that the ESSENCE range
falls under the respondent’s
“formal range” and can
be found in selected stores. When this person was asked whether
the ESSENCE brand was
used in respect of jewellery, handbags and
other accessories, she indicated that this brand had only been used
in respect of ladies’
formal clothing.
[12]
During a visit at a Truworths store at
Cresta Shopping Centre, it was noticed that the brand is appearing on
a range of ladies’
clothes and digital images thereof were then
obtained. It is further alleged that, according to a manager at
the store, the
ESSENCE brand had only been used in respect of women’s
clothing and never in respect of jewellery or other accessories.
[13]
According to the answering affidavit the
respondent has sold merchandise under the ESSENCE trade mark for the
past 23 years.
It is also alleged that many of the garments
forming part of the ESSENCE range of clothing feature embellishments
with a jewellery
type appearance. The jewellery attached to
some of the clothing can also be detached from the clothing and worn
separately
as a distinct and independent item. As evidence of
this reference is made, by way of example, to annexures “EC13”
to “EC18”.
[14]
Annexure “EC13” is a copy of a
style card. It is dated May 2010 in respect of a white ESSENCE
structured shirt
with necklace detail. The necklace itself is
depicted on annexure “EC14”. According to the
evidence this
necklace can be detached and worn separately apart from
the garment. This necklace appears to be an item of jewellery
and
bears the trade mark ESSENCE. Annexures “EC15”
and “EC16” are photographs of actual garments displayed
in the respondent’s stores that are sold together with
detachable items of jewellery.
[15]
According to annexure “EC13”
the product in question is identified by reference to a type number,
style number, a sales
department reference and a category reference.
A stock sheet appears in the centre of the right-hand portion
of the page.
It is evident from the legend at the top of the
page that this was last updated on 28 August 2013, shortly prior to
the date on
which the answering affidavit was signed. The
relevant dates are, however, recorded on the document itself.
From this
it is evident that there were sales of the garment,
including the necklace, during the period 17 May 2010 to 5 July
2010.
According to the evidence 500 items were delivered to the
respondent’s stores and the stock reduced from 403 on 17 May
2010
to 98 on 5 July 2010, indicating that 305 garments were
sold.
DISCUSSION
[16]
It was contended on behalf of the applicant
that the respondent has not demonstrated use in any commercially
coherent category of
goods in Class 14. It was also
submitted that none of the “adornments” depicted in the
annexures are items
of “jewellery”. They constitute
decorations, embellishments and trimmings which are attached to
clothing and
not sold separately as items of jewellery.
[17]
It was contended on behalf of the
respondent that where the goods in question are made up of
constituent parts, all of which do
not fall within the class for
which a particular trade mark is registered, it is necessary to
identify whether or not the trade
mark is being used in relation to
the goods covered by the registration. The test is an objective one
and is aimed at determining
what the reasonable customer would
think.
[18]
I agree with this submission. The Class for
which this trade mark is registered includes jewellery. Jewellery is
defined in the
Shorter Oxford English Dictionary (sixth
edition) as “gems or ornaments made or sold by jewellers,
esp.
precious stones in mountings; jewels
collectively or as a form of adornment” and in Collins
Concise Dictionary as “objects
that are worn for personal
adornment, such as rings, necklaces, etc., considered collectively.”
[19]
In
Shalom
Investments (Pty) Ltd v Dan River Mills Inc
1971 (1) SA 689
(A) at 704G-705A use of the trade mark DAN RIVER on
swing-tags in relation to the fabric used to make dresses was held
also to
constitute use of the trade mark in relation to the dresses
themselves. Having regard to these guidelines and the
evidence,
more particularly annexures “EC13” and “EC14”
to the answering affidavit, it seems to me that the trade
mark
ESSENCE has been used in relation to the goods (i.e. jewellery such
as a necklace) covered by the registration. Put
differently,
this particular garment includes an item of jewellery covered by
Class 14 registration and therefore this item constitutes
goods in
respect of which the trade mark is registered.
[20]
It is also apparent that each of the style
cards referred to above shows that the items in question were held in
stock and sold
over periods of time, all of which fall within the
“material date”. The evidence indicates that during the
period May
2010 to July 2010 500 items were delivered to the
respondent. The stock reduced from 403 to 98 indicating that
305
garments, including the necklace, were sold. This clearly
indicates that use took place in the context of commercial activity.
In the result I am of the view that the respondent has discharged the
onus to demonstrate clear and unambiguous proof of relevant
use
during the relevant period.
ORDER
:
The application is dismissed with
costs.
_________________________
D S FOURIE
Judge of the High Court
Pretoria
Date:
28 May
201
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