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[2018] ZASCA 108
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Truworths Ltd v Primark Holdings (989/2017) [2018] ZASCA 108; 2019 (1) SA 179 (SCA); 2018 BIP 320 (SCA) (5 September 2018)
Links to summary
THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Reportable
Case no: 989/2017
In the matter between:
TRUWORTHS
LTD
APPELLANT
and
PRIMARK
HOLDINGS
RESPONDENT
Neutral citation:
Truworths Ltd v Primark Holdings
(989/2017)
2018 ZASCA 108
(5 September 2018)
Coram:
MAYA P, WALLIS, WILLIS, DAMBUZA and VAN DER MERWE JJA
Heard
: 15 August 2018
Delivered
: 5 September 2018
Summary:
Trade mark – expungement from the register in
terms of ss 27(1)(
a
) and (
b
) of the
Trade Marks
Act 194 of 1993
–
s 27(5)
of Act –protection from
expungement where mark is a well-known mark in terms of
s 35(1)
of Act – requirements for proof that mark is a well-known mark
– whether there had been bona fide use of mark in South
Africa.
ORDER
On appeal from:
Gauteng Division of the High Court, Pretoria
(Monama J, sitting as court of first instance):
The appeal succeeds with costs, such costs to include those
consequent upon the employment of two counsel.
The order of the high court is set aside and replaced by the
following order:
The respondent’s registered trademark, PRIMARK, registration
no TM 1976/04952 in class 25 of the trade marks register,
is
expunged from the register and the Registrar of Trade Marks is
ordered to effect the necessary rectification.
The respondent is ordered to pay the costs of the application for
removal, such costs to include the costs of two counsel.
JUDGMENT
Wallis JA (Maya P, Willis, Dambuza and Van der Merwe concurring)
The appellant, Truworths Ltd (Truworths), is a long-established and
well-known fashion retailer in South Africa. The respondent,
Primark
Holdings (Primark), is the fashion retail subsidiary of Associated
British Foods plc, an international company with a
range of
interests, principally in food and agriculture. Primark originated
in Ireland, where it is still based, but it has expanded
from there
into the United Kingdom and also to Spain, Portugal, Belgium, the
Netherlands, Germany, Austria and France. When these
proceedings
commenced it was contemplating establishing its first store in the
United States of America. Although it has never
established a store
in South Africa, in 1976 it registered the trade mark, PRIMARK,
registration no TM 1976/04952, in class 25
of the Trade Marks
Register, in respect of ‘clothing; boots, shoes and slippers
included in this class’.
Truworths wishes to register the mark PRIMARK in class 25, and
proposes to sell clothing under that brand. Relying on
ss 27(1)(
a
)
and (
b
) of the Trade Marks Act 194 of 1993 (the Act), it
brought an application for the removal of Primark’s mark from
the register.
It did so on the grounds that there was never a bona
fide intention to use it on the goods or services in respect of
which it
was registered, and that there had been no bona fide
use
of the mark for the statutorily defined period. The application was
dismissed by Monama J and the appeal is with his leave.
The issues
The statutory provisions on which Truworths relied provide for a
mark to be removed from the register for non-use, either because
there was never any bona fide
intention to make use of the
mark or, more simply, because there had been no bona fide
use
of the mark for five years preceding a date three months prior to
the date of the application for its removal. Under both
sections
there must have been no bona fide use of the mark in the period up
to three months prior to the bringing of the application.
The onus
of proving bona fide use rests on the proprietor of the mark in
terms of s 27(3) of the Act.
Primark contended that there had been bona fide
use of the
mark during the relevant period, but the principal focus of its
argument was that Truworths was not entitled to invoke
the
provisions of ss 27(1)(
a
) and (
b
), because the Primark
mark was a mark entitled to protection under the Paris Convention
for the Protection of Industrial Property
(1883).
Section 27(5) of the Act
provides that ss
27(1)(
a
) and (
b
) do not
apply to a trade mark in respect of which protection may be claimed
under the Paris Convention as a well-known trade
mark within the
meaning of section 35(1) of the Act. In other words, a well-known
mark is not subject to expungement from the
register on the grounds
of non-use in terms of those sections. Primark’s contentions
in this regard will be addressed first
because, if correct, the
question of bona fide
use of the mark does not arise.
Section 35(1) of the Act
The background to the Act’s provisions
concerning well-known marks was set out by Harms JA in
The
Gap
1
and need not be repeated. They had their origins in art 6
bis
of the Paris Convention and ss 35 and 36 of the Act are the
statutory means whereby South Africa complies with its obligations
under that article. A
well-known trade mark entitled to
protection under the Act is, in terms of s 35(1)(
a
):
‘…
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.’
Section 27(5) reinforces the protection afforded to well-known marks
by s 35, by precluding their expungement from the register
on the
grounds of non-use. This enables the proprietor of the mark to enjoy
the protection of a registered mark without the need
in every case of
possible infringement to prove that it is a well-known mark under
s 35.
The only dispute as to Primark’s entitlement to claim the
protection of the Paris Convention is whether PRIMARK is a
well-known mark in South Africa. In determining that question
s 35(1A) provides that:
‘…
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.’
This provision was inserted into the Act
2
after the decision of this Court in
McDonald’s
.
3
That held that the requirement that a mark be a well-known mark in
the Republic under s 35(1) did not mean that the mark needed
to
be well known among the whole population of South Africa. It merely
needed to be well known to persons interested in the goods
or
services to which the mark related.
4
The amendment made this approach applicable as a matter of
statute. As to how many persons in that class must be aware of the
mark,
this Court held that it had to be a substantial number, similar
to that required in the law of passing off. What would constitute
a
substantial number was a question of fact.
5
Section 35(1A) refers to knowledge of the mark ‘in the
relevant sector of the public’. This too flows from the
judgment in
McDonald’s
,
where the Court held
that potentially there might be more than one sector of the public
interested in the goods or services of
the proprietor of the mark.
6
If there are two or more sectors so interested, they may overlap to
some degree, or be entirely distinct.
The first task is
therefore to identify the relevant sector or sectors of the public
and then to determine whether the mark is
well known within those
sectors.
7
The evidence may show that the mark is well known among the persons
constituting one, but not another, relevant sector of the
public. I
will in due course consider how that situation is to be resolved.
There was a sharp difference of approach between the parties on the
identification of the relevant sector of the public. Primark
describes its business as that of a discount fast-fashion clothing
retailer. Truworths contended accordingly that the relevant
sector
of the public in South Africa was ‘all South Africans
interested in clothes and accessories’. In argument
this
effectively became all South African consumers who buy clothing.
Primark for its part identified a narrower sector of the
South
African public in the form of those people who are interested and
active in the fashion and retail industry, such as retailers
of
fast-fashion clothing and fashion writers, bloggers and their
readers. It said that knowledge of its mark extended to members
of
the public, who had encountered its stores while travelling, or in
references in fashion magazines, blogs and internet searches.
Well-known marks and the relevant sector of the public
Identification of the relevant sector of the public was a central
issue in
McDonald’s
.
8
The Court held that there were two categories that could constitute
the relevant sector, namely, potential customers interested
in
purchasing hamburgers and related fast food and potential
franchisees of McDonald’s restaurants. The former category
would be more extensive than the latter. It was potentially a large
group, as such food was not expensive, although it would
be out of
the reach of the extremely poor. The second group would be far
smaller consisting of people who knew of the brand’s
international reputation and success and were interested in
exploring the business opportunity afforded by operating a
franchise.
The court in
McDonald’s
did not need to decide which
of these two possibilities was the relevant sector of the public
because it held that there was substantial
knowledge of the
McDonald’s marks among sufficient members of both groups. Thus
virtually every potential franchisee would
know
McDonald's
and its marks as evidenced by numerous enquiries made to McDonald’s
itself and to a national franchising association. Awareness
among
consumers would be lower, but was nonetheless sufficiently extensive
among people who were interested in the purchase of
fast food and
sufficiently well off to do so, to justify a finding that a
substantial portion of such persons would probably
have heard of
McDonald’s and know its marks or some of them.
In
The Gap
the respondent identified the relevant sector as
being individuals aged between 16 and 50 living in A+ income
suburbs. It sought
to establish knowledge in this sector of the
public by reference to evidence of a market survey. The judgment
9
highlighted the fact that potentially there were other sectors
of the public that would be relevant to determining whether a mark
was well known. It referred to the
‘Joint
Recommendation Concerning Provisions on the Protection of Well-Known
Marks Adopted by the Assembly of the Paris Union
for the Protection
of Industrial Property and the General Assembly of the World
Intellectual Property Organization (WIPO)’
(1999). Article
2(2)(a) recommended that:
‘
Relevant sectors of the public shall include, but
shall not necessarily be limited to:
(i) actual and/or potential consumers of the type of
goods and/or services to which the mark applies;
(ii) persons involved in channels of distribution of the
type of goods and/or services to which the mark applies;
(iii) business circles dealing with the type of goods
and/or services to which the mark applies.’
The relevant sector of the South African public identified by the
respondent fell under sub-art (i). Harms JA doubted whether the
evidence sufficed to show that the mark was well known among members
of that sector, but proceeded on the basis that there was
some
evidence that the relevant mark was well known in the trade. This
reflected an acceptance that knowledge of the mark among
persons in
the sectors falling within sub-arts (ii) or (iii) of the
recommendation, would suffice to render it a well-known mark.
No
final conclusion on the point was necessary, as the case was disposed
of on the basis of an assumption that the mark was well
known within
a relevant sector of the public.
In my view consideration of the possible sectors of the public
identified in the WIPO recommendations was the correct approach.
WIPO is one of the 15 specialised agencies of the United Nations and
its object is to promote the protection of intellectual
property
throughout the world. It was established in 1967 as the successor to
the International Bureaux for the Protection of
Intellectual
Property, which had been established to administer the Paris
Convention and the Berne Convention for the Protection
of Literary
and Artistic Works. The Paris Convention is one of the international
conventions administered by WIPO. Its recommendations
respond to
trends and developments in international trademark law.
10
South Africa is one of its 191 member states and a party to the
Paris Convention and the TRIPS agreement, which require member
states to enforce the provisions of the Paris Convention in regard
to well-known marks.
11
The source of the recommendations was an initiative by WIPO to
provide clarity on the identification of well-known marks and
the
criteria to be used in this process. Accordingly WIPO convened a
Committee of Experts on Well-Known Marks meeting in Geneva
from 1995
to 1999 for the purpose of ‘considering the criteria that
should be used to define what a well-known mark is
… and what
measures should be taken to make the protection of well-known marks
more effective in the world’. The
recommendations are the
product of this process and were adopted by the Assembly of the
Paris Union for the Protection of Industrial
Property and the
General Assembly of WIPO at meetings in 1999.
12
As a member of WIPO South Africa was a party to these decisions.
Therefore, while the recommendations are non-binding, they
nonetheless provide a persuasive guide to the interpretation and
application of the Paris Convention by courts in this country.
Article 2(1) of the recommendations deals with the factors to be
considered in determining whether a mark is well known. It provides
that:
13
‘
(1) [
Factors for
Consideration
] (a) In determining whether a
mark is a well-known mark, the competent authority shall take into
account any circumstances from
which it may be inferred that the mark
is well known.
(b) In particular, the competent authority shall
consider information submitted to it with respect to factors from
which it may
be inferred that the mark is, or is not, well known,
including, but not limited to, information concerning the following:
1. the degree of knowledge or recognition of the mark in
the relevant sector of the public;
2. the duration, extent and geographical area of any use
of the mark;
3. the duration, extent and geographical area of any
promotion of the mark, including advertising or publicity and the
presentation,
at fairs or exhibitions, of the goods and/or services
to which the mark applies;
4. the duration and geographical area of any
registrations, and/or any applications for registration, of the mark,
to the extent
that they reflect use or recognition of the mark;
5. the record of successful enforcement of rights in the
mark, in particular, the extent to which the mark was recognized as
well
known by competent authorities;
6. the value associated with the mark.
(c) The above factors, which are guidelines to assist
the competent authority to determine whether the mark is a well-known
mark,
are not pre-conditions for reaching that determination. Rather,
the determination in each case will depend upon the particular
circumstances of that case. In some cases all of the factors may be
relevant. In other cases some of the factors may be relevant.
In still other cases none of the factors may be
relevant, and the decision may be based on additional factors that
are not listed
in subparagraph (b), above. Such additional factors
may be relevant, alone, or in combination with one or more of the
factors listed
in subparagraph (b), above.’
These criteria are similar to those to be found in national
legislation in some countries and to the factors identified by
courts in cases concerning well-known marks.
14
They do not provide a single universally applicable test to
determine whether a mark is well known. They constitute a guide to
the determination of that question, in accordance with objective
factors.
15
They are not inflexible, but set out a basic framework for making
the necessary assessment. The assessment is undertaken in relation
to what are
prima facie
the relevant sectors of the public,
namely consumers of the
goods in question and persons
involved in the trade in relation to such goods.
16
Article 2(2)(a) of the recommendations, which is set out in para 11
above, deals with the identification of the relevant section
of the
public in a country where it is sought to enforce a well-known mark.
Which sector of the public is relevant for enforcement
purposes will
be affected by the nature of the goods or services provided by the
proprietor of the mark. In the case of luxury
brands
aimed at the extremely wealthy, such as the Hotel Cipriani in
Venice
17
or the Amanusa resort in Bali,
18
the relatively small group of consumers of the services of
those establishments will be the relevant sector. With some
speciality
goods, such as medical appliances provided to doctors,
the relevant group may be limited to the suppliers of such
appliances
to the doctors, rather than the manufacturers.
19
The proper identification of the relevant group involves a factual
enquiry that is specific to the particular mark and the goods
or
services to which it relates.
McDonald’s
illustrates that there may be cases where
there is more than one relevant sector. Article 2(2)(b) of the
recommendations deals
with the situation where the mark is well
known in one sector of the public, but not another. It provides
that:
‘
(b) Where a mark is determined
to be well known in at least one relevant sector of the public in a
Member State, the mark shall
be considered by the Member State to be
a well-known mark.’
The effect of this is clear. Provided a party claiming protection
under the Paris Convention establishes that its mark is well
known in
any relevant section of the public, the mark must be taken to be a
well-known mark entitled to protection. The fact that
it is not well
known in other relevant sectors is irrelevant.
20
When dealing with a mark applied to goods, such as fashionable but
relatively inexpensive clothing, sold in the retail market
to a wide
body of consumers, those potential consumers will constitute one
relevant sector of the public. To that extent, Truworths’
submission that the majority of potential purchasers of clothing in
South Africa, outside the ranks of the extremely poor and
those
having no interest in clothes at all, constitute a relevant sector
of the public is correct. It submitted that this was
the only
possible relevant sector.
Primark disputed that contention. It identified as a relevant
sector people involved in channels of distribution of clothing
in
the retail sector, together with a far smaller segment of the
public. This included all those having a connection with the
production and sale of fashion garments and related accessories such
as those sold by Primark, especially designers, marketers,
buyers
employed by retail outlets and the like. It included people such as
fashion stylists and commentators on clothing and
fashion, whether
such comments were made on television, or in newspapers, magazines,
fashion blogs and internet sites dealing
with fashion issues.
Persons studying clothing design, fashion and the design of clothing
accessories, as well as those who teach
them, would also form part
of this universe. Primark likened this sector to the potential
franchisees in
McDonald’s
.
Sub-art (b) of the recommendations obliges member states to
recognise a mark as a well-known mark if it is established that
the
mark is well known in at least one relevant sector of the public. It
is convenient to approach the case by examining the
evidence to
determine whether the mark is well known to the two groups
identified by the parties. If it is well known to the
public in
both, or in the group identified by Truworths, then that is an end
to the matter and Truworths’ appeal must fail.
If it is well
known only among persons constituting the group identified by
Primark the question will be whether that is a relevant
sector of
the public for the purposes of Paris Convention protection.
The evidence
Primark adopted the PRIMARK mark in the early to mid-1970’s
when it was expanding from its Irish base to the United Kingdom.
In
1976 it caused the mark to be registered in South Africa and at much
the same time registered it in a number of other countries.
It
expanded dramatically from the year 2000, as demonstrated by the
schedule of store openings provided to the court.
21
It entered markets in Europe in 2006 and by 2014 it had 270 stores
in 9 countries and was about to enter the US market. Its focus
is
primarily on fashionable clothing at affordable prices, although it
also sells homeware, accessories, beauty products and
confectionery.
Its annual turnover in the five years from 2009 to 2013 was slightly
less than £16 billion. Over the same
period its worldwide
advertising and promotional spend was more than £57 million.
It had two websites, one with a United
Kingdom address and one with
a top level domain registered for a commercial organisation. It also
had a Facebook page and a Twitter
account. When Mr Shields deposed
to his affidavit the former had received over 3 million ‘likes’
and the latter
had over 54 000 followers. Some at least of the
latter were South Africans.
22
Nearly 450 000 people followed its Instagram account and again
this included some from South Africa. There had been over
40 000
hits on its websites from South African locations.
In regard to Primark’s visibility and reputation in
international retail circles it has won a wide range of awards from
various bodies, of which the most prestigious appears to have been
when in 2010 it won an industry award as the Multi Market
Retailer
of the year at the World Retail Awards in Berlin. Delegates from 56
countries, including South Africa attended the award
ceremony. Two
major South African retailers, Truworths and Woolworths, won awards
at the same ceremony. The award to Truworths
was as the Emerging
Market Retailer of the Year.
23
There was no challenge to the prestige or international awareness of
these awards in retail circles, including South Africa.
Primark was also recognised as one of the top 250 retailers and one
of the 50 fastest growing retailers in reports published
by a large
international business consultancy, Deloitte, entitled ‘Global
Powers of Retailing’ published in 2010,
2012, 2013 and 2014.
Of particular interest here is that other well-known South African
retailers, such as Shoprite Holdings
Ltd, Pick n Pay Stores Ltd,
Massmart Ltd, the SPAR Group and Woolworths Holdings Ltd,
24
featured in the same publications and lists. Again there was no
challenge to the relevance of these reports and that they would
have
promoted awareness of Primark in retail circles in South Africa.
Four of the retailers mentioned above are clothing retailers,
amongst other things, as anyone who has ever visited their stores
will be aware. The only response by Truworths was to say that
they
are aware of Primark and its PRIMARK mark overseas.
Awareness of Primark’s business and its mark among clothing
retailers in South Africa was established by affidavits from
five
deponents who were active in the clothing retail sector in South
Africa. Ms Hamman, the marketing director of Ackermans,
said that
Primark was the first place their buyers visit when they are in
Europe and that they follow the brand, its merchandising,
advertising and in-store campaigns closely. They also purchase stock
lots of other Primark sub-brands for resale in South Africa.
Her
evidence was supported by Ms du Toit, the Central Buying Manager of
Ackermans, who said that she was familiar with the PRIMARK
brand and
its main store in London, where she had purchased clothing for her
own family.
Three people employed by Foschini Retail Group (Pty) Ltd also
deposed to affidavits. Ms Lederle, a buying manager, said she had
encountered the PRIMARK name many times during the previous ten
years and regularly visited its shops in the United Kingdom and
Spain as well as acquiring samples for discussion with her group of
buyers. The Primark ‘look’ is something her team
discuss
frequently. Ms Matthee, the head of buying for casual wear, said
that she was very familiar with Primark and frequently
visited its
store in London during buying trips. She had bought clothing for
herself and her family there. She regarded it as
one of the most
well priced, fashionable retailers in the world. Ms Brumfield, the
head of buying for ladieswear with 23 years
experience as a buyer in
the fashion industry, had worked for Truworths before joining
Foschini. She said that she knew Primark
well as a store that
stocked the latest trends, but represented great value. She had
shopped there regularly during her overseas
buying trips. Primark
was discussed with her team of buyers, who reported to her through
three managers, and it was viewed as
an attractive brand.
Save for an initial challenge to its admissibility, none of this
evidence was challenged. Nor was that of a fashion blogger,
Ms
Harding, who created her blog in 2013 to share information about the
fashion industry with her approximately 15 000 readers.
She had
a lengthy background in the fashion industry as a designer, marketer
and freelance style and beauty writer. She said
that she had been
aware of the PRIMARK brand for many years and had encountered it
while travelling in the United Kingdom. It
was a well-known brand in
the fashion industry and in her opinion would be familiar to most
South Africans who had lived or travelled
in the United Kingdom. In
initially opposing the admission of this affidavit Truworths
complained that it was not a response
to the market survey evidence
it tendered, which evidence will be discussed in due course, but
importantly it did not challenge
its contents at a factual level.
There is some evidence that Primark was known and regarded as
newsworthy to at least some readers of the financial press. An
article appearing on a well-known financial news site in May 2014
reported on the intended launch of its US store and the appointment
of the head of its Spain and Portugal division to head this venture.
The news site was aimed at a general readership and was
headed
“Primark gears up for US market’. A side panel
identified related articles for its readers as including one
about
Marks & Spencer losing market share in the United Kingdom and
another about the South African retailer Edgars selling
a ‘top
UK clothing brand’. The article presupposed that its readers
would be interested in retailing activity in
the United Kingdom and
would be aware of Primark and its rise to prominence. The same was
true of another business article, which
referred to a proposed
revamp of a local retailers stores and mentioned that the designers
had worked with brands such as “Next,
Sony, Primark, Levi’s,
Topshop and Nokia’. A third article about the rising cost of
cotton said that Primark and
other international retailers, such as
H
&
M and Levi Strauss, had warned of higher
prices.
The evidence of Ms Harding drew some support from a number of
extracts from online magazine sites and blog posts directed more
specifically at a South African audience. One blog entitled
‘Stylescoop’ had a posting in 2009 about shopping in
London and referred to a number of fashion outlets in London,
including Primark, although with the slightly less than flattering
line that ‘if you just want bags and bags of goods, with
minimal concern for quality then Primark is your destination’.
25
Rather more flattering was a 2013 post on a local website describing
it as a ‘go to place for fashionable clothing’
for the
budget conscious.
The latter blog also mentioned the disastrous collapse of a building
in Bangladesh housing clothing factories. It said that Primark
sourced goods from this manufacturer, but was offering aid to the
affected families. The writer compared its approach favourably
with
that of two other fashion retailers, both of which were based
overseas, but had stores in South Africa. Like the financial
articles already mentioned, it presupposed that its readers would be
familiar with Primark and the other two retailers as well
as the
tragedy in Bangladesh, which had featured prominently in news media
in South Africa. News articles from three separate
news outlets were
put up as annexures to the opposing affidavit all referring to
Primark’s involvement with the factory.
All three articles
were written from the perspective that their readers would know
Primark and the other foreign retailers it
mentioned. The one
article published a photograph of demonstrators standing outside a
Primark store with its name prominently
displayed above their heads.
Pages from other fashion web sites annexed to the opposing affidavit
mentioned Primark along with other clothing retailers in
London,
such as Selfridges, Topshop, Forever 21, New Look, H
&
M,
River Island and Hobbs. An article about a popular singer mentioned
that she bought some of her clothes at Primark and H
&
M.
Blog entries from a site entitled Style Guide CT identified some of
the clothes being worn in the pictures as being from Primark
and
suggested that some out of season stock might be available for
purchase at a Cape Town boutique. A blog about shoes mentioned
that
the writer was wearing a pair from Primark. Another showed a handbag
from the same source.
The record included 88 pages downloaded from the websites of two
well-known fashion magazines, Marie Claire and Elle, which were
said
to have circulations of 35 000 and 45 000 respectively in
South Africa. A careful perusal revealed a total of
4 pages where a
model or member of the magazine’s staff was pictured and one
or other item of clothing they were wearing
was said to emanate from
Primark. In one instance the item was a pair of ‘secret’
socks that were invisible to the
viewer. The following 65 pages of
the record produced even leaner pickings with three similar items.
Insofar as the evidence extracted from the internet and described in
the preceding two paragraphs was directed at showing that
the
Primark brand was well-known among younger more fashion conscious
people in South Africa, it failed in that purpose. A handful
of
references over a couple of years to some random items of clothing
having emanated from Primark was hopelessly inadequate
to establish
the requisite degree of knowledge of the mark among a substantial
sector of South African consumers. At most it
indicated that
possibly there was some interest in and knowledge of Primark among
those who paid close attention to such matters
at the relevant time,
but it did not go beyond that.
Given the prominence of Primark in the United Kingdom there must
inevitably have been a measure of spillover knowledge of the
mark
among visitors to the United Kingdom from South Africa. The
information placed before us shows that there are several hundred
thousand people of South African origin living in the United Kingdom
and that many people visiting the United Kingdom from this
country
do so to visit relatives or for business or recreational purposes.
Many visitors from South Africa shop while they are
there, including
for clothes. Tax refund receipts for South African shoppers at
Primark from 2009 to 2014 show nearly 3 000
claims on
transactions amounting to a little more than £600 000. Bearing
in mind that Primark prides itself on its low
prices and that tax
refunds are only available on amounts in excess of £100, it is
probable that sales to South Africans
are considerably higher than
that. However, shopping in the United Kingdom, even for reasonably
priced fashion clothing is something
that only a minority of South
Africans are able to do and those are principally drawn from those
falling in higher income brackets.
The consumer survey
Truworths commissioned a consumer survey to assess whether the
Primark brand was well known in South Africa. Such surveys are
an
accepted method of assessing such matters. They are based on the
Central Limit Theorem that holds that if independent samples
are
drawn randomly from a universe the individual results will be
different, but will have what is referred to as a normal
distribution. In this case the survey was based on a primary and a
secondary universe. The primary universe consisted of adults
aged 18
and over, resident in the main metropolitan areas of Cape Town,
Durban and Johannesburg, including Soweto. The secondary
universe
was identified as those individuals who had purchased any type of
clothing in South Africa prior to 6 May 2014, whether
from a
retailer or on the internet.
The survey was conducted by way of interviews of 500 respondents
identified by statistical methods that have not been criticised
by
Primark and can be accepted as appropriate for conducting such a
survey. The respondents were asked first whether they recognised
ten
marks shown to them in random order. The second question, in order
to ascertain if they could identify the marks they claimed
to
recognise, was “What is it?”. The other questions were
whether they purchased clothes from South African retailers
and
whether they had done so in the period prior to 6 May 2014. These
latter were directed at identifying the secondary universe.
The
answers to all the questions were then collated and ‘grossed
up’ to a population universe of 6 848 000
adults
fitting the profile of the primary universe in the three main metro
areas. The figure of 6 848 000 was obtained
from
statistical sources the reliability of which was not questioned.
The outcome of the survey was that 3.5 per cent of respondents
claimed to know the mark PRIMARK. Of the 3.5 per cent, 0.9 per
cent
regarded it as a clothing store; 0.6 per cent as simply PRIMARK; 0.4
per cent as a retail store and 0.2 per cent as a London
store. The
balance thought it sold household appliances or food. The other
foreign mark used in the survey, Marks & Spencer,
fared somewhat
better. It was recognised by 8.4 per cent of respondents and broadly
speaking the vast majority of them knew the
nature of its business.
There was far greater familiarity among the respondents with the
eight South African brands used, namely Capitec Bank, Clicks,
Jet,
Mr Price, PEP, Pick n Pay, Truworths and Woolworths. The level of
recognition varied between 96 per cent for PEP stores
and 85.4 per
cent for Truworths, with the bulk of respondents being able within
broad parameters to identify the nature of the
businesses in
question. It is fair to say that this result was to be expected when
dealing with a sample universe based in the
major metropolitan
areas. Seven of these marks identified what are probably the
best-known stores in the country. All of them
have a broad national
distribution with outlets in many shopping centres as well as the
central and suburban areas of the three
major metros. They are
household names.
No criticism was addressed to us concerning the methods used in
conducting the survey or the validity of the sampling process
and
the statistics underpinning the survey. In argument it was submitted
that it was therefore decisive of the issues in this
case because it
was unchallenged evidence of a scientific nature. That submission
went too far. Like any other expert evidence
the court is obliged to
assess the internal logic of the evidence and its probative value in
accordance with the issues in the
case. If it is not addressed to
those issues then, however meticulous the methods adopted in
arriving at the conclusion, it will
be unhelpful.
The principal difficulty with this survey is that it is directed at
the broadest possible universe of adults over the age of
18 years in
our three major metropolitan areas. Given the diversity of our
population it was to be expected that overwhelmingly
they would not
have heard of a retail fashion outlet in the United Kingdom and
Europe catering to those who aspire to fast fashion
at affordable
prices. The majority would not gloat, as did one blogger, at the
prospect of buying a denim jacket for £16
or a dress for £17.
The result of the survey was to be expected.
The relatively few respondents who recognised Primark (either 17 or
18 out of 500, constituting 3.5 per cent of the 500 surveyed)
would
be expected to be drawn from the much smaller proportion of our
population that is literate, has access to the internet,
is
interested in fashionable clothing, has spare disposable income and
has travelled overseas or has contacts overseas. The far
better
known Marks & Spencer name, which had a previous connection to
Woolworths in South Africa, was recognised by only
8.4 per cent of
respondents amounting to about 42 respondents. When counsel was
asked whether Marks & Spencer was a well-known
brand for the
purposes of s 35(1), he was understandably reluctant to give a
definite answer. His reticence, like the survey
itself, was
indicative of a fundamental problem. That problem was whether the
survey, commissioned to assess the degree of knowledge
of the
PRIMARK mark, was directed at the correct sector of the South
African public.
The survey report and the affidavits did not reveal who determined
the issues that were the subject of the survey and, more
importantly, the sample to be surveyed. Dr Corder said that the
questionnaire was formulated by the company undertaking the research
in consultation with himself and Truworths’ attorneys. As
neither Dr Corder nor the survey company would know in advance
or
understand the purpose of the survey, it seems probable therefore
that Truworths’ attorneys identified the sector of
the South
African public to be surveyed in accordance with their view, as a
matter of law, that this was the correct sector.
Of course if the
appropriate sector was incorrectly identified the value of the
survey would be limited. In my view the survey
cast its net too
widely.
The result is that the evidence in the survey is only of limited
assistance. It confirms that PRIMARK is not recognised by the
vast
majority of adult South Africans living in our major metropolitan
areas. It can be inferred that it would be even less well
known if
one extended the question to the whole population of this country.
If that were the correct sector of the population
to be considered
in determining whether the mark was a well-known mark, the answer
would be that it was not. The issue is whether
that was the sector
of the population that had to be considered and, if it was, whether
it was the only relevant sector of the
public that had to be
considered.
Discussion
Truworths said that the relevant sector of the public in regard
to whether PRIMARK was a well-known mark in South Africa
in terms of
s 35(1) of the Act would consist of ‘
actual
and/or potential consumers of the type of goods and/or services to
which the mark applies’. Even though Primark describes
itself
as a ‘discount fast-fashion clothing retailer’, it is
unlikely that its potential customers in South Africa
would
encompass the entire primary universe identified in this way and in
the consumer survey. I accept that everyone needs,
and in some way
or other is obliged to acquire, clothes. However, given the way in
which Primark projects itself, with enormous
stores in the major
shopping streets and shopping malls of international cities, and
stores in malls in other significant urban
and suburban areas, I
think it improbable that its potential market in South Africa would
extend to the poorer echelons of our
society, or the bulk of our
rural towns.
In my view Primark’s potential
customers in this country would primarily be residents in urban and
peri-urban areas with
some disposable income after paying for life’s
necessities. They would be looking for inexpensive clothing with
some aspiration
to be stylish and perhaps some knowledge, whether
through the written word or word of mouth, of fashionable brands.
This does
not mean that only the educated, affluent and travelled
fall into this category. Even relatively poor and unsophisticated
people
may be aware of brand names and aspire to them in the same
way as more sophisticated consumers. Street traders selling
counterfeit
goods with barely disguised logos or brand names of
international brands can be seen every day selling their wares on
our city
streets. The reason they do so is that people are aware of
those brands and aspire to own goods bearing them.
The relevant sector of potential consumers was
therefore narrower than Truworths contended. But one cannot narrow
the sector to
the extent that Primark sought to do, restricting it
to the better-educated and more affluent members of society. That is
not
an accurate picture of the consumers it targets. While it is
likely that a larger proportion of this sector of the population
would be aware of Primark, many of them would have no interest in
the clothing it offers. As mentioned above, one of the travel
and
fashion writers said that she could not bring herself to enter
Primark. That reflects that some people may not be potential
consumers of goods from stores they regard as ‘downmarket’.
Consumers who may be interested in luxury goods or services
can be
identified reasonably accurately on the basis of economic status.
But, generally speaking, when one is dealing with a
clothing
retailer aiming to provide fashionable clothes at low cost, the more
affluent consumer is not the person they are aiming
to attract. The
market is broader encompassing much of the middle to lower income
groups.
In my opinion that is a reasonably accurate
description of the body of consumers in South Africa who would be
interested in shopping
at Primark. When dealing with a group of
potential customers of that breadth it is inevitably difficult to
assess whether a substantial
number of them know the mark of a
retailer aiming at a similar target market in other countries. The
task is even more difficult
in a society such as South Africa, which
is heavily stratified along lines of race, class, culture,
education, language and economic
circumstance. What is clear from
the evidence summarised earlier in this judgment is that those
identified as having knowledge
of PRIMARK were not broadly
representative of the middle to lower income groups in South Africa.
The majority in those groups
do not look forward to overseas travel,
much less shopping trips in London, although if they had the
opportunity to go there
they might very well shop at Primark, rather
than more expensive clothing chains. The readership figures show
that by and large
they do not read glossy fashion magazines such as
Elle or Marie Claire and if they have access to the internet they
are more
likely to use it to search for jobs, rather than surfing
fashion websites and reading blogs.
A disquieting feature of this case is that Truworths has never
disclosed its reasons for wishing to register the PRIMARK mark.
It
was extremely coy about its knowledge of Primark’s business
and the use to which it intended to put the mark, saying
only that
it intended to use it on clothing. It must have been aware of the
mark, at least at an international level, from 2010
when they were
both winners of awards at the World Retail Awards. It incorrectly
said that it only discovered the existence of
the registered mark on
the South African register in November 2013. That was inconsistent
with the fact that in September 2013
its attorneys instructed an
investigator to investigate whether there had been use of the mark
in this country. The original
application said disingenuously that,
other than knowing the location of Primark’s head office in
Dublin, Truworths had
‘no further information’ on the
nature of its business. After this was shown to be dishonest, the
replying affidavit
grudgingly admitted that Truworths was aware of
Primark’s business and its PRIMARK
trade mark overseas.
Counsel for Primark urged us to hold that the reason for this
reticence was that Truworths recognised the value and attractiveness
of the mark and that it was well known in South Africa. A similar
argument was successfully advanced in
McDonald’s
.
26
In my view it does not transplant well to this case, in part at
least because the PRIMARK brand is as much associated with the
stores as with the merchandise in the stores. People shop ‘at’
Primark rather than ‘for’ Primark clothes.
Material in
the record shows that it sells clothing under various sub-brands.
Several offers on the eBay printout it attached
to the answering
affidavit described items as ‘Atmosphere’, either alone
or in conjunction with Primark.
Truworths’ claimed intention was to use the mark on clothing,
not to open stores under that name, which might devalue its
own
mark. Its more probable purpose, as conceded by its counsel in
answer to a question from the bench, was to register its own
mark
and make limited use of it, intending thereby to prevent Primark
entering the South African market. Primark’s counsel
mooted
this possibility in the heads of argument and I agree that on the
face of things it was the most probable reason for Truworths
seeking
to secure registration of this mark in its own name. That being so
it was not motivated by a view that the mark is well
known in South
Africa, but by a desire to block competition from a potentially
dangerous rival.
For those reasons I do not think that Primark succeeded in showing
that a sufficiently substantial number of potential customers
for
its goods in South Africa knew its mark. But, as pointed out
earlier, that is not an end to the matter. There are still questions
whether it is a well-known mark to the sector of the public
constituted by people involved in the marketing and distribution
of
the type of goods in which Primark trades and, if so, whether that
is a relevant sector of the public for the purposes of
s 35(1)
of the Act.
There can be little doubt that the mark is well established. It has
been extensively used in the United Kingdom for some forty
years as
the brand has developed. That use expanded rapidly in Europe in the
eight years between 2006, when the first store was
opened in Madrid,
and 2014, when these proceedings were launched. The business has a
substantial turnover and the mark is widely
and extensively
advertised. It has achieved recognition both in its home markets and
internationally. The latter is demonstrated
by the Multi Market
Retailer of the year award in 2010 and its consistent appearance in
the industry analyses published by a
major consultancy.
The evidence of the various buyers from Ackerman’s and the
Foschini Group supports the conclusion that within the retail
trade
in clothing in South Africa, apart from that for up-market, luxury
brands and clothes by well-known designers, the mark
PRIMARK is well
known. Truworths’ desire to protect itself from competition
from Primark lends support to that conclusion,
as does the
prominence that it enjoys in the reviews of world trends in retail
markets produced by Deloittes. The evidence about
fashion magazine
and blog references also supports the notion that among this group
of persons operating within the retail fashion
market in South
Africa the mark was well known.
Insofar as it related to persons with no connection to the fashion
industry, the evidence in relation to people shopping in
London or
visiting one of the Primark websites on the internet, did not
advance Primark’s case. The reason is that the
bulk of the
individuals concerned would themselves be actual or potential
consumers of Primark’s goods and therefore fall
into the
sector of the South African public identified by Truworths. They
fall in the 3.5 per cent of South Africans identified
by the
consumer survey. There is no good reason for distinguishing them
from the general body of consumers or treating them as
different on
the grounds of education, relative affluence, opportunity to travel
or the like.
Accepting that the Primark mark is well known to the portion of the
South African public engaged in the design, distribution
and retail
of inexpensive fashion clothing, the next issue is whether this is a
relevant sector falling within either of the
classes identified in
the WIPO recommendations, namely ‘persons involved in channels
of distribution of the type of goods’
or persons within
‘business circles dealing with the type of goods’.
Counsel submitted that this sector of South Africans fell within
these groups, or perhaps straddled them, and it was akin to
the
potential franchisees in the
McDonald’s
case. I do not
agree. The class of potential franchisees in that case existed
because there was evidence that over a period of
years 242
individuals had approached McDonald’s directly with a view to
entering into franchise agreements for restaurants
in South Africa.
A leading figure in the Franchise Association of South Africa gave
evidence that he had received ‘numerous
requests, too numerous
even to have counted’ from prospective franchisees and
ordinary members of the public about opening
a McDonald’s
franchise. In other words there was substantial evidence of persons
wishing to enter into business relationships
with McDonald’s
with a view to supplying McDonald’s goods under McDonald’s
trademarks to the South African
consumer. The inference was that
their reason for doing so was their knowledge of the attractive
force of the McDonald’s
marks.
The attempt to draw an analogy between
McDonald’s
and
the present case was misplaced. By contrast to the position in
McDonald’s
, there was no evidence in this case of South
African retailers or other possible distribution channels seeking to
form a relationship
with Primark with a view to selling Primark
branded clothing in this country. The mark is well known to people
in the clothing
retail sector because they wish to emulate its
success for themselves. It is entirely natural for a South African
business of
any substance to keep in touch with trends among
businesses of a similar type in other countries, in order to copy
and, if possible,
emulate their successful business policies and
avoid their mistakes. That is precisely what the five buyers who
deposed to affidavits
said they were doing, namely, keeping in touch
with similar retailers with a view to improving their own employers’
businesses.
They were not aspiring to enter into an arrangement with
Primark to become a channel for distribution for its wares in South
Africa.
That highlights an essential requirement for any identified sector
of the public to be regarded as a relevant sector in an enquiry
whether a mark is a well-known mark in South Africa. The persons
constituting the sector in question must know of and be interested
in the mark for the reasons that trade marks are given protection,
namely their attractive force in the trade in goods and services
and
their role as a badge of origin of those goods and services. The
essence of a trade mark is that it shows a connection in
the course
of trade between the goods or services concerned and the proprietor
of the mark.
27
The purpose of protecting it is to preserve the value of the mark to
the proprietor and prevent its appropriation by another
or its
dilution. Actions that do neither of those things do not amount to
an infringement of the mark, as illustrated by the
Verimark
case,
where the appearance of BMW’s logo on a car in an
advertisement for car care kits and car polish was held not to
constitute infringement.
The reasons for a party claiming protection for a well-known mark
are the same as the reasons for protecting a registered mark.
28
The mark must be well known in a sector of the public that would be
vulnerable to being deceived or confused if the mark was
used by a
third party. Consumers of the goods or services in respect of which
the mark is used fall in this category. So may
people seeking to
distribute those goods or services. If McDonald’s had been
unable to protect its well-known marks, franchises
could have been
rolled out throughout South Africa under those marks to the
confusion not only of the public wishing to eat McDonald’s
hamburgers from their originating source, but also of people wishing
to conclude franchise agreements to operate McDonald’s
outlets.
Knowledge of a mark may arise in circumstances unrelated to any
desire by the people acquiring that knowledge to purchase the
goods
or services or engage in a business relationship with the proprietor
of the mark. Students at a business schools, studying
Primark’s
rapid and apparently successful expansion as a case study in an MBA
programme, would know the mark but not for
any commercial purpose.
Another retailer, seeking to emulate a successful business operating
in the same field but in another
country, would also acquire
knowledge of the mark, but with a view to enhancing the performance
of its own business. That type
of knowledge of the mark is unrelated
to the proprietor’s use of the mark for the purposes for which
trade mark protection
is extended. In order for a mark to qualify as
a well-known mark under s 35(1) it must be well known among a
relevant
sector of the South African public. Relevant sectors
of the South African public will be constituted by those who are
potentially
likely to be attracted by the mark’s reputation to
do business with the proprietor of the mark, whether as consumers,
agents,
importers, channels of supply, retailers or otherwise. Any
other knowledge of the mark is irrelevant for the purpose of
determining
whether the mark is a well-known mark deserving of
protection under s 35(1).
It follows that the class of persons identified by Primark as a
relevant sector of the public for the purpose of deciding whether
PRIMARK was a well-known mark in South Africa in 2014 was not in my
opinion correctly identified as such. That leaves the only
relevant
sector as the body of consumers discussed earlier in this judgment
and, for the reasons already given, the mark is not
well known among
them. Primark’s reliance on ss 35(1) and 27(5) to resist
expungement of its mark must therefore fail.
I turn then to consider
the question of
bona fide
use of the mark.
Bona fide
use of the mark
Bona fide use of a trade mark is use in relation to goods or
services of the type in respect of which the mark is registered.
The
use must be use as a trade mark, for the commercial purposes that
trade mark registration exists to protect. It must be use
in the
course of trade and for the purpose of establishing, creating or
promoting trade in the goods to which the mark is attached.
The use
must be genuine.
29
Genuineness is to be contrasted with use that is merely token, but
the line is a fine one, because the use may be minimal.
30
Whether use of the mark was bona fide is a question to be determined
on the facts of the particular case.
31
The evidence of use on which Primark relied in opposing the
application for expungement was tenuous in the extreme. It consisted
firstly of a single sale of a pair of Ladies Silk Palazzo Pants on a
South African website describing itself as an online marketplace.
The sale was not at the instance of Primark, was not authorised by
it and occurred about one month prior to the commencement
of these
proceedings. Therefore it did not qualify as bona fide use for the
purposes of s 27(1)
(b)
. Secondly, reliance was placed on
a search conducted on eBay on 13 August 2014 reflecting various
Primark labelled garments available
for sale with prices expressed
in South African currency. As with the first item the sales were not
by or on behalf of Primark
32
and the search reflected the position after the commencement of
proceedings. The website is based in the USA and the fact that
prices were reflected in Rand may be due to the website’s
algorithm automatically converting prices into the local currency
of
the viewer. Once again this was not bona fide
use for the
purposes of s 27(1)
(b)
.
Thirdly, reliance was placed on a statement in a blog by a fashion
blogger, Ms Harding, that a website known as ASOS
33
had invited Primark to ‘join their great round up of British
clothing brands’ and that this would make Primark clothing
available in South Africa. While the blog post was within the
relevant period it did not purport to be by or on behalf of Primark.
As ASOS is based in the United Kingdom it did not reflect any
intention by Primark to sell its clothes in South Africa. This
too
was not evidence of bona fide
use for the purposes of
s 27(1)
(b)
.
Unsurprisingly, in those circumstances the argument that there had
been bona fide
use of the Primark mark in South Africa during
the relevant period was not pressed in argument. It was not
abandoned but left
on the basis of the evidence outlined in the two
preceding paragraphs. In my view that evidence was insufficient to
discharge
the onus resting on Primark that there had been bona fide
use of its registered mark during the relevant period.
Result
It follows that the appeal and the application
for the expungement of the mark PRIMARK in class 25 must succeed,
subject only
to the point that follows. Such success does not
necessarily mean that any application by Truworths for registration
of that
mark, whether in class 25 or some other class, will
necessarily succeed. As foreshadowed in its heads of argument,
Primark might
seek to rely on ss 10(3) or (7) of the Act
to resist such registration, a
course on the merits of which I express no opinion. Primark also
contended that any attempt by
Truworths to use the PRIMARK mark
would constitute trade mark infringement under ss 34(1)(
b
)
and (
c
)
and 35 of the Act. It was accordingly submitted that we should
exercise our discretion to refuse an order for expungement. The
argument appealed to the high court.
The high court did not give any reasons for exercising its
discretion in favour of Primark, other than referring to Primark’s
statutory monopoly. The whole point of expungement proceedings is
that the proprietor of the mark in question should not be entitled
to any statutory monopoly when it does not make use of it for the
purposes for which it was granted. This was a misdirection
and we
are at large to reconsider the issue. Again it was not strongly
pressed in argument and in my view no exceptional circumstances
34
existed to warrant the exercise of any discretion in favour of
Primark.
The following order is made:
The appeal succeeds with costs, such costs to include those
consequent upon the employment of two counsel.
The order of the high court is set aside and replaced by the
following order:
The respondent’s registered trademark, PRIMARK, registration
no TM 1976/04952 in class 25 of the trade marks register,
is
expunged from the register and the Registrar of Trade Marks is
ordered to effect the necessary rectification.
The respondent is ordered to pay the costs of the application for
removal, such costs to include the costs of two counsel.
________________________
M J D WALLIS
JUDGE OF APPEAL
Willis JA (concurring):
[68 ] I concur. The reason I do so is that, in terms of the principle
of territoriality set in s 35(1) of the Act and affirmed
in
unequivocal terms in the unanimous judgment of this court in
The
Gap
, the mark is not well known in South Africa. It is therefore
not entitled to protection under the Paris Convention. It may
accordingly
be removed from the register on the ground of non-use in
terms of ss 27(1)
(a)
and
(b)
of the Act. As Wallis JA
has correctly observed, there can be no serious contention that the
mark has indeed been used by Primark
in South Africa, in the manner
provided for in the Act.
[69] Truworths has blatantly claimed that it ‘intends selling
clothing under the trade mark in PRIMARK in South Africa and
has also
applied to register the PRIMARK trade mark in class 25 in its name in
South Africa.’ Truworths therefore intends
to be a ‘copycat’
imitator of another’s brand or label. That a court should
sanction this endeavour by Truworths
may be disconcerting to the
ordinary intelligent reader.
[70] Imitation may be the sincerest form of flattery but may it be
permitted, even in circumstances where the ‘impersonation’
verges on deception?
The Gap
makes it plain that, in the
absence of ‘something more’, the principle of
territoriality prevails over policy considerations
of the morality of
such imitation.
35
[71] The principle of territoriality no doubt arose from the desire
to avoid the needless restraint of trade in goods or services
in one
country, the get-up of which happened to resemble or be similar to
that in another. In this regard, it is instructive to
read s 35(3) of
the Act. What harm can arise if customers like to buy goods or
services in one country, impervious to the fact
that their get-up
resembles those in another? Why deprive unconfused consumers of their
right of access to goods and services,
which are otherwise not
unlawful and which they, as customers, wish to enjoy? Nevertheless,
territorial isolation is a vanishing
phenomenon.
[72]
National boundaries and borders may restrict the movement of people,
money, goods and services but the osmotic power of ideas
and indeed
images has intensified immensely in recent decades. Mass air travel,
television, the internet and the social media are
among the
instruments of change that have played their part in this process.
Television, for example, beams live international
sporting events
being played in foreign lands into our living rooms with billboards
around the sports ground advertising goods
well-known abroad, but not
yet frequently encountered here. So, too, we regularly see images of
street scenes of towns and cities
in other countries. In the
twinkling of an eye, a brand or label not well known in South Africa
can become embedded in the consciousness
of ordinary people living
here.
[73] Primark
is not well known in South Africa as a brand or a label but
Truworths’ application, by necessary implication,
concedes that
Primark has a market reputation that, at least potentially, is worth
having. A court may fairly take judicial notice
of the fact that the
‘theft’ of intellectual property, including trade marks,
features regularly at summits of political
leaders coming from
different parts of the world.
[74] If the principle of territoriality in relation to trade marks
is to be revisited, in the light of changing social milieux,
this
will require an internationally concerted political effort and
considerable political will. These are matters beyond the province
of
this court.
_________________________
N P WILLIS
JUDGE OF APPEAL
Appearances
For appellant: A R Sholto-Douglas SC (with him M Maddison)
Instructed by: Spoor & Fisher, Cape Town;
Phatshoane Henney Attorneys, Bloemfontein.
For respondent: C E Puckrin SC (with him L G Kilmartin)
Instructed by: Adams & Adams Inc, Pretoria;
Honey Attorneys Inc, Bloemfontein.
1
A M Moolla Group Ltd v The
Gap Inc
2005 (6)
SA 568
(SCA) (
The Gap
)
,
paras 12-14.
See
also
Novelty Pte
Ltd v Amanresorts Ltd and Another
[2009]
SGCA 13
;
[2009] 3 SLR 216
(SCA) paras 166-169 and Michael Blakeney
‘The Protection of Well-known Trademarks’ paper
delivered at a WIPO
seminar on
intellectual property at the University of Cairo in February 2003,
www.wipo.int/edocs/mdocs/arab/en/2003/ip_cai_1/.../wipo_ip_cai_1_03_8a.doc.
2
By s 65(
a
)
of the
Intellectual Property Laws Amendment Act 38 of 1997
.
3
McDonald's Corporation v Joburgers Drive-Inn
Restaurant (Pty) Ltd
and
Another;
McDonald's
Corporation v Dax Prop CC and Another; McDonald's Corporation v
Joburgers Drive-Inn Restaurant (Pty) Ltd and Dax Prop
CC
1997
(1) SA 1
(SCA) (
McDonald’s
).
4
At 20B-E.
5
At 21A-E.
6
At 27 I-J.
7
The Gap
,
supra,
para 18.
8
McDonald’s
,
supra, 27I-28H.
9
The Gap
,
supra, para 18, fn 20.
10
WIPO website
www.wipo.into/trademarks/en/
accessed on 18 August 2018.
11
The Gap
,
supra, para 13.
12
Frederick W Mostert
Famous
and Well-Known Marks
(2 ed, 2004) pp
1-5 to 1-6 and fns 14 and 15.
13
The provisions of this recommendation are largely
incorporated in the provisions of
s 2(7)
of the Singaporean
legislation corresponding to our
s 35.
See
Novelty
Pte Ltd v Amanresorts Ltd and Another
[2009]
SGCA 13
;
[2009] 3 SLR 216
(SCA) para 136.
14
Mostert, supra, §III; pp 1-13 to 1-15.
15
Novelty Pte Ltd v Amanresorts Ltd and Another
,
supra, para 138.
16
Hotel Cipriani Srl and Others v Cipriani
(Grosvenor Street) Ltd and Others
[2008]
EWHC 3032
(Ch),
[2009] RPC 9
, approved on appeal
Hotel
Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others
[2010] EWCA Civ 110
;
[2010] RPC 16
para 87.
17
Hotel
Cipriani Srl and Others v
Cipriani (Grosvenor Street) Ltd and Others,
ibid.
18
Novelty Pte Ltd v Amanresorts Ltd and Another
,
supra.
19
Mostert, supra, Ch I, p 1-37.
20
LTC Harms ‘Famous
Trademarks’ paper delivered at a WIPO conference in Tokyo in
2017 available at
www.wipo.int/edocs/mdocs/mdocs/en/wipo_ipr_tyo.../wipo_ipr_tyo_17_t15.pdf
,
accessed 17 August 2018, p 12: ‘A sector of the population
must be ‘interested in the goods or services to which
the mark
relates’ and saying at p 18 that relevant sectors include
those identified in Article 2(2)(a) of the WIPO recommendations.
21
Over 120 of its UK stores have opened since 2000 and all of its 76
stores in mainland Europe were opened between 2006 and 2014.
22
The locality of a person following a Twitter
account is identified by the underlying analytics. The same is true
of other social
media. In this way the operator of a website is able
to target the site visitor with advertisements from people in the
visitor’s
home country.
23
In its Annual Report for 2017 Truworths says
that: ‘One of the highlights of the group’s illustrious
history was being
recognised as the Emerging Markets Retailer of the
Year at the World Retail Awards in Berlin, Germany, after being
placed second
in 2009.’
24
Some editions also included the Steinhoff Group,
which was largely seen as a furniture retailer, but also owned
Pepkor, the owners
of PEP Stores and Ackermans, both major clothing
retailers.
25
The writer of another article confessed that she could not bring
herself to enter Primark. Presumably this was annexed on the
principle that no news is bad news and Primark was concerned with
knowledge of its brand, not whether it was liked.
26
McDonald’s
,
supra, at 23H-1 and 28G-H.
27
Verimark (Pty) Ltd v BMW AG; BMW AG v Verimark
(Pty) Ltd
2007 (6) SA 263
(SCA) paras
5 to 7.
28
Mostert, supra, Ch 1, p 1-44.
29
The Gap
,
supra,
para 42
.
30
La Mer Technology Inc v Laboratoires Goemar SA
[2004] FSR 38
;
Laboratoires
Goëmar SA v La Mer Technology Inc
[2005]
EWCA Civ 978
;
[2005] All ER (D) 493
(Jul). In that case the Court of
Appeal in England held that five or six sales to a distributor
amounting to about £800,
with no proof of sales to the public,
involved genuine use of the mark.
31
Westminster Tobacco Co (Cape Town and London) (Pty) Ltd v Philip
Morris Products SA and Others
[2017] ZASCA 10
;
[2017] 2 All SA
389
(SCA) para 7.
32
C/f
Morris Material Handling Ltd v Morris Material Handling (Pty)
Ltd
[2018] ZASCA 67
para 7
et seq.
33
An acronym for ‘As Seen on Screen’,
which is apparently an online retailer of clothes and fashion.
34
McDonald’s
at
32 A-H.
35
Para 11. See also
Victoria’s
Secret Inc v Edgars Stores Ltd
[1994] ZASCA 43
;
1994
(3) SA 739
(A) at 745G-748H.