REPUBLIC Of SOUTH AFRICA
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IN THE HIGH COURT OF SOUTH AF'RJCA
GAUTEN.G DI.VISION, PRETORIA
tW"ORTAnLE : 't'E.@) . . _
OP- INf , TO • , •
REVJSCO, £
In the matter between '.
ALTRONLTD
a.nd
TRACKER (PTY) LTO
TH,E REG1S'TRAR OF TRADE MARKS FOR 'THE
COMPANIES ANO INTEUECTUAl COMMISSION
Raubenheimer AJ:
lnf.roductio.n:
JUDGMENT
Case Number: 2023-086367
.AP?LICAN i
FIRST RESPONDENT
SECOND RES
1
PONDEHT
(H This app'lication ooncerns the removal of 1our trade mark registrations for
'Taking Back Tomoonw', ,registered by the !First Respondent ("Trackef"") in classes: 35.
37, 39 and 45. The Appficant ("AIUon") seeks expungemenl under s 27(1)(b) ot tho
Trade Marks Act 194 ol 1993 ("Actl on the basis ot non-use
(2) The mat1er raises foundational quesbons in South African trade mark law,
including•
a) the meaning and scope of "interested person· under s27( 1) ot the Act;
b) the doctrine of residual reputation and its interaction with non-use;
c) the proper interpretation ors 27(5) of the Act and i1s relationship to s 35(1) of
lhe Act
d) the nature or the Court's diSCtetion in non•usc applieabons; and
e) the admissibility of further affidavits in motion proceedings.
The statutory fromcwork :
(3) The uadcmarks register is lntcnde<l to reflect marks !hat are used in llade . This
principle is foundational and has been repeatedly affirmc-d in South African
jurisprudence that the purpose of the register is to record marks that are used. or
intended to be used, as trademarks, 1 and to renecc marks tt\at function as Indicators
of origin in the marketplace.' It does not serve as a warehouse for unused marks.
(4) The eHect is that lhe no~se provisions serve a pubfic interest function:
preventing clutter, ensuring commercial certainty, and maintaining the integrity of the
register.
[5) Section27(1)(b) of the Act provides that a registered mark may be removed
where there has been no bona fide use or the lladc mark in relation to the goods or
services for which it is registered for a continuous period of r,ve years.
' Sedian 22 Tnde MaOO; kJ 1!U al ,w . PopJz,,RtJ (t,JI (P:yJ Ltd v Tll/Wflf1hs Ud[20 10 J 1.1-scA 11.6 .1.1 p,3til 1 0➔
2 Kr,ri fJu~ Or.tnt:s (Pr1) Ud v ~ AG 2021 ZASCA 24- ~ pon 99.
2
[61 Bona fide use refers to genuine commercial use. not token or contrived use for
the purp0se of preserving the registration .' and the determination of I/le existence
thereof is and objective and fact-based exercise.•
(71 In (supra). I/le SCA sttessed that I/le inquiry is objective and fact based.
[81 It is common cause that Tracker has not used lhe ·raki119 Bock Tomorrow· mark
since 2016. The statuto,y basis for removal is therefore c.iablished unless Tracker
establishes 9 dctence or the Coun exercises its discrebon.
191 Section 27(5) of the Act provides that Section 27(1 )(a) and (b) of the Acl 5 do
not apply to marlts entitled to protection under the Paris Convention as well-known
marks within the meaning of Section 35(1) Act. V\lhich defines such marks as those
well known In the Republic as being the marks of a national of a convention country
or a person domiciled or having a real and effective industrial or commercial
establishment in a convention country.
1101 SC!Ctlon 27(5) of the Act has been Interpreted to be app!Jcable to the protection
of well-known marks of foreign proprietors and does nol extend to domestic
p<0prietors. f'J
(11I Tracker challenged this Interpretation and submitted that the purpose of the
Paris Convention is to protect well known marks. not foreign nationality. and that the
current interpretation produces irrational results.
(121 It relies on constitution~! interpretive principles that the Interpretation mus1
promote the splril purpoII and objects of the Bill of Rights.' The result of the process
of interpretation is to avoid irrational or arbitrary outcomes. The process of
interpretation must be purposive and context sensitive.4 avoid absurdity and promote
> QA 0.l Cot;:ior.,bon v ~ I Fi>bnl<~nte ,;//n(/ U,:in~ lEdln;J Bole 1063 (2) SA 10 (T} al o:uas 1~ M
4 ~sAO vPvpid'J, (201lJ ZASCA3 QI para 14.
' Secrion :n tSJ rud w1tn21(1 )(ol Ord(b) ol lJ'O r~ M~rts Act 10£ of , 993
' Secrion :n tSJ rud w1tn21(1 )(ol Ord(b) ol lJ'O r~ M~rts Act 10£ of , 993
f ~ Lion .t.b'lcif.octuM!) (Pry} LJdvN~tlont,I Sl¥1d$ Ltd 20» (1 IS.- 3-48 (Tl,'T,vv,,artl\1 LIO v Ptlm.311( H(IICi,w;,
2019(115.A 1XISCA~5
1 K.uby:ln.'l II Stlind.w Bri-2014 V,l;C 1 a.I~ 18
• cni:suse v DF...ct.or Goner.I ~ AJt$itS 2020 ZACC 20 -'. p.,ra Sl
3
coherence.ri and an interpretation that align with constitutioo.:il values should be
prefcrred.10
113) These arguments are compelling, but Blue Lion Manufacturing (Pty) LJd v
National Brands Lid ("Blue Lion·), 11 remains binding aulhority.
Locus Standi:
[1 4] The cone.cpl of an ·interested person· in Section27(1) of the Act is Ille
successoc to the earlier term ·person aggrieved· under the Ad of 1963. Although the
wording Changed. the jurisprudence interpreting •person aggrieved" remains relevant
and has been consistenUy applied by South African courts.
[151 The foundabonat case Is in re Appollinarls Co Ltd," where the English Court of
Appeal held that the concept Is intended to exclude mere busybodies or common
informers. and to confine the right of complaint to persons who have a real Interest in
the register being correct.
(161 This principle wos adopted in South Africa in Joshua Gibson Ltd v Bacon, •J
where the Court held that an applicant must show that he is in some way substantially
interested in having the mark removed.
[17] ThiS approach was reamimed when the roimer Appellate Division conc:Juded
that an applicant must show a real and not merely fanciful interest In tile removal of
the mark.."
[18] The Interest must be genuine and legitimate, and ii must anse from the
app!W:ant's lradin,g activities or Intended trading actlvites.16 The interest must amount
to a real commercial interest in the removal of the mark. not a hypothetical or academk:
'ltdepe ndenfComm~ PhiJ,m;,cy~,or,vekA:s ·C,o,JtJUd.rdO!hcr.i[?OZI J7.ACC 1Qo,l pa,ra 112
'' A~ Mt:.>q Stinn~ ¥111 Undol\)ftJ(m v ~ ·o,,o, IOI' me Sov.h ~n Ri,winw So~ 2075 7>SCA 20
al Ur.I ti.
1 ' ~ t.ion /.(JntdXJurir'WJ (Pr1) Ud v N:J(,on.,/ 8r.Yitil Ud 200S ( 1) $A 3-&0 fTI
•~ Rt;Apt)(Jll&r>.MS Co UO(t8?1·18 RPC 137 ICA)
n Jo!/luo Gb$on Ud v &a'Jn 1927 TPO 207 a, par., 210
"' R:,a HoJetLJdv Ch;Jtmol tho Ritr Ud 19U (l) SA 290(A t at paraJO?.A.O
•~ ~ C1'olb:rtg (Ay)UdvN~C-.W Marlroring 109 1 {l) SA 650 (A)atp3ro 6 .
d
interest '5 The applicant is rurlhermore required to show that the continued presence
of the mark on the register is likely to cause him sub5lantial dam.:,ge. 11
(19) Although standing In tradcmarx litigation is regulated by statute it has to be
interpreted in light of constitutional principles of access to courts and purposive
interpretation.
(20) In this sense standing must not be understood to be a technical obstacle course
but ra~r., proclieal Inquiry into whether the litigant ha,s a real interest in the outcome
and can a liLigant not rely on a hypothetical or abstract interest The interest must be
real and grounded in fact,.
(21) This duality - liberal access to courts but requiring a real Interest - informs
the modem approach to s 27(1) of the Act
(22) AJtron asserts that Traci<efs registrations "may hamper" its intended use of
TAKE ON TOMORROW. On the other hand. Altron simullane<>usly asserts that the
marxs are not confusingly similar. that the CtPC has conditionally accepted its
applications, that there is no impediment to registration and that Tracker's concerns
are unfounded.
(23) Altron is taking a position that are mutually destructive It cannot claim to be
substantially interested In removing a marl< while insisting that the marl< has no legal
or commercial impact on it
(24) This is the type of contrived interest rejected in Riti Hotel. Danco CJ0//1ing. and
Valentino Gtobo."
(25) Altron staled that it brought the application out of an abundance of conservative
caution. There is no legal basis for such an approach and has the Appellate Division
IG So«/J Alrit:.¥'! FootlJtJI A.~roi " St.Jnlon \\tJoorust, lPr-1) Lid \; SL,Not1 ~ u:n W02 {2) SA '30 (fJ Ol
p:,r, 23tl.
" V.\IM.1,',io GJooo 8V v ~ 1!Y'-'3 fll SA '1'15 tSCA) 01 P3Q 7819,
'
11
Gani, Conoor.l CC v ~ ln~nll 2013 P) SA 571 (CC) al pan J-4.
•• Rn Hotel v Cl-..lrl¢:; of V30 Ritz Ltd ati<we n 1.c: Oanoo Cbclihg (Pry) Ud v NI./-C.arie M:Jrk.eflfttJ .itiovo n 15: ,1nd
v~ G/o.>:J BV v ~ :.bave n 17.
5
expressly rejected ·precautionary· or · tactical" interests and docs the A<:l not provide
for removal proceedings merely to dear the register as o mo1ter of convenience.'°
(26) Speculative or hypothetical interest is ,nsufficienl 2 1
(27) The fact U>al Trad<er befieves U>al U>e marks are similar cannot assist Altron in
establishing standing as its interest must arise from 11s own trading activities not from
the respondenrs assertions. 22
(281 Altron's own positioo that there is no sim~arity, no confusion. and no
impediment is fatal lo its standing and has Altron failed to establish that it is an
"interested person· under s 27(1).
(291 However, in case I am wrong. I proceed to consider the merits.
(30] Section27(1)(b) is a central meelianism for maintaining the integrity of U>e
trademarks register by ensuring that the register renects marks that are used as
indicators or or;gin in the ~rketplacc .
(311 In Adidas AG v Peplcor Retail Ltd," tile purpose or non-use provisions was
explained as to record marks that are used. or intended to be used. as trademarks.
1321 This principle Is rooled In the public intcresl A clunered register impedes
commercial cenainty, Inhibits competition, and undermines the function of trade mar~s
as Indicators of origin.
(331 An inquiry under s 27(1 )(b) is not punitive; it is corrective. II ensures that the
register remains o rclk':ible public reCOf'd.
(341 The requirement of "bona fide use· has been interpreted to mean genuine
commercial use. not token or contrived use.
(351 In Rembrandt (Edms) Bpk v. Gulf Oil Co,porotion, '' the Coun held that genuine
use means use:
r t1 Al.1 H ok,1 v CMrll>.s: ol rr,e Ri'tz Ud M>Ovt1 n 1 9
'' V.)lonrJno~ £1VvPMip, abcMt" 17
" lbnc:o Cfott,in,J " M,..Qfe Ma/1..&M!} 15,CO above n 10
n kk:f.U AG V PeORJI i:JboYc n , .
!'• G¢ Oil Ct.tt,Ol'Stiott II R!mOrandr F.t,,;Jwntc en H:J~ (Edms} 6""' .abOYe n J m.t para 240.
6
'with the obJeci or intention J)(imarity ot pro1ccting. facililoting and rur1he,ing 1,ading in
such goods. and noisome olhc<. ulterio, motrve,"
[36) This prlnople aligns with international jurisprudence. including the English
decision ,n Ans,,/ BV v Ajax Brandbeveiliging ,"' wnere the Court held that use must be
·consistent with the essential function of a trade mark.·
(37) The essential function of a trade mark Is lo indicate ong,n. Use that does not
serve this function Is not bona fide.
(38) It is common cause that Tracker has not been using the 'Taking Back
Tomorrow' marl<s since 2016,
(391 Tracker does not contend otherwise and does not seriously dispute the
absence of advenising. sales. promotional use. intemal use, token use or defensive
use.
(40) Although the statutory ground for removal is satisfied tracker relies on residual
reputation, section 27(5), or the Court's discretion,
(41) The Doctrine of Residual Reputation recognises that goodwill and reputation
may persist after use has ceased.
(42) \!Vhcther residual reputation exists i.s a factual enquiry and the court will
consider scale, duration and impact of prior use.20
(43] A reputation has an clement of durability and does not cease lo exist on
ces.sation of use.' ' A reputation may endure even after production has ceased 13
(44] Residual reputation may be inferre<l from extensive adveolsing,"' scale and
manner of use,30 long tenn exposure.31 emotional impact of the c;:impaign, continued
public recognition and the conduct of compe~tors.
:-s .Aru.ul 8V v A;ax Brnni.b.Ml1T'9ii,g UVRfJOl) 1:, MR 85 (ECJ).
:r, ~ "IJ No,,tJi~IIW~lnc v 0GB IPt1} l.ld7'0()t JOA 031!> (Tl al Plllta 10
:, Pol~ow 8'otriors v Gotiritol'I,·,., 19715 (IJ SA~ (El al &MO-C
:• ear.,ma,n Ca, Soro, & Cooct11,o,t,Ud Y 8 .mtt Cars (PrJ) Lid lflS6 (3) SA 9 )8 tSCA> 61 p~r.n 15-IG
~• HO/t'JVl'OOdOm v Twins Products 1st1' (1) SA 1J6 (A) at P3B 24!lJ
• At:iidas AG v Pt:pkof ~ n 4 at p.ya 29.
~ Kct·Ji Muitinai"..ional a~ n 2 at 1»Q 21
7
(45) The conduct of competitors is relevant to determining whether a rcputotion
per;islS
(46) Where a competitor adopts a get up strikingly similar to that of the plaintiff is a
strong indication that the plaintiffs get up is distinctive and the inference is that the
plaintiffs get up retains commercial value.»
[47) In Yellow Cobs v Ginsberg," the Court held !hot imitation is evidence of
,epu1ation.
(48) Tracker's evidence establishes a decade long campaign lasting some rnne
years, substantial advenising spend exceeding R145 million. national television and
r.:idio campaigns, iconic advertisements such as ~Memories." conbnued onlinc
availability.
(49) Tracker also rcned on expen evidence lo which Altron di<I not object.
(50) In Prico Waterhouse Coopers Inc v Notions/ Poroto Co-cpera/i ve Ltd,"' the SCA
held that expert evidence is admissible where it assists the court in matters reQulring
specialised kno•Nfedge.
[51) The evidence establishes a substantial residual reputation, The acquisi1ion ol
Tracker's p<oduct bundle names (Connec~ Empower, Protect) by Netstor in 2025
strengthens the inference of residual goodwiD.
{52) The inrerence that Altron sough! to benefit rrom Tracker's goodwill is consislenl
with Blue Lion and Yel/ow Cabs.
(53) Section 27(5) of the Act provides Iha! s 27(1 )(a) and (b) do no1 apply to marks
entitled to protection under the Paris Convention as well-known ma,ks within the
meaning of s 35(1 ).
(541 Sectioo 35(1) of Ule Act defines such marks as those well known in !he Republic
as being the mar1ts of a national of a convention oountry, or a person domiciled or
:U Adcock.-lngr.Jffl Prcxtuw LJdv&«tl.lm SA /Pfy) LJ(f 1977 (4) SA 434{W) t,I pow~ 12.
)l Yclo1v ~ v Gin!b!ltp 11)30 V4[) 20S DI p:ara 209.
>" Prioo W-!orhou$0 Coq::;l!n Inc v N.:ion;:il PobtO Co ope,.W!J Utf 2015 ZASCA 2 a! p.ira 97.
8
•
having a real and effective industrial or commercial establishment In a convention
country.
[551 The purpose or the Paris Convention is to protect well known marlts. not foreign
nationaliry.
[561 Atticle 6bis of the Paris Convention requires member slates to protect well
known m~rks "whether or not they are registered.·
[57) In Blue Lion. the Court held that Section 27(5) ,s directed at protecting the well
known marks of rorelgn proprietors. It does not extend to domeslic proprietors.
[58] Tracker argues that this interpretation ,s incorrect but Blue l ion remains binding
authoriry.
(591 Even where non-use is estabJished. the Court retains a discretion to refuse
expungement
[60] This discretion is rooted in the equitable nature of trade mark law. And may he
court refuse expungement where lhe equities favour the proprietor."
[61] The discretion must be exerci,;ed judicially and must lake into account all
relevant factors" such as residual reputation, hket,hood of deception, conduct of the
applicant and public interesL"
[62] Tracker has established a substantial residual reputation.
(63] Altron's conduct Including Its denial of simllariry. itS assertion or no impediment,
and Nets tar's appropriation of Tracker's product bund'e names weighs heavily against
granting relief.
(64] The pubfic interest is not served by permilting app,opriation of goodwill,
(65] I would consequcnUy exercise my discretion againsl expungemenL
:ii Adida.s AG and Mort1e1vPe(Jrl)tRVfall l.td abowe n <1 ,
36 KGt'li MuJ:,'n&tlOR,;)f &mds ( Pry) U d" &ilNsdorl At!~ n :1:
31 Hr,,Jlywood Curl v Twins Ptoduel!'J :iibOYo n i9.
9
(66] The further affida'lil concerns facts arislng alter the answenrl91 ~U'f,davit II is
relevant to resldu.al reputation a.-...d the equities It Is conttSe, matenal, af\d not
prejud,ci I,
(67) Leave to rue it should be granted.
Conclusion ·
(68} Allron h.>s fafJed to e-st3bh~I\ locus standi and even tf 1t was estabb:she-d Tracker
has ~stabhshed residual reputation. Although Tracker cannot rely on s27(5) the Court
would exercise rts discretion against expungemenl
Order.
[691 Til rouowu,g order 1$ made:
1 lhc application for removal o'I the Flrsl Respondent's trade mark rcglstrabons
for 'Taking Bock Tomorro, 1~ d•~missed.
2 The First Respandent Is granted lea e to file 115 further affidaVJl
3. The Applicant ,s ordered to pay lhe First Respondent's costs. includ111V the
cosl'S or two counsel.
COUNSE'l FOR THE PLAINTIFF:
INSTRUCTED BY:
COUNSELFORTHE1~ RESPONOENT
ACTING JUDGE OF THE HIGH COURT
GAUTENG 0IV~SION
PRETORIA
Adv Salmon SC
Edward Nathan Sonnenbcrg"s Inc
Adv C Puckn n SC
INSTRUCTED BY: Webber Wentzel
DATE OF ARGUMENT: 15 Oclober 2025
DATE OF JUDGMENT 14 Apnl 2026
11