South Africa: "Harmony" Within The Gap Camp

Last Updated: 6 September 2011
Article by Aletia Van Rooyen

Squabbling over the legal right to the Gap brand in South Africa and who owns the brands, have at last been settled between the Durban based clothing manufacturer, Kingsgate Clothing and Gap Inc after years of dispute.

All of the Gap trademarks and related intellectual property (in South Africa and neighbouring countries) were assigned to the international brand owner, Gap Inc.

During 1973 Gap brand was trademarked in South Africa by Mr Hirsch independent from Gap US, not yet known locally or internationally.

Salt of the Earth was taken over by AM Moolla during the early eighties who registered another Gap logo in 1988, this time an obvious copying of the Gap logo. Salt of the Earth continued to register the trade mark Gap Kids, Gap had adopted and registered in 1985.

Gap has since expanded throughout the US and worldwide, but was unfortunately barred by Salt of the Earth from manufacturing goods in SA for export and as such, Gap redirected manufacturing of its products to Lesotho.

A 12 year litigation battle began between the parties. Gap's principal goal of the litigation against Kingsgate's predecessors, the Moolla Group was to expunge registered trade mark-marks held by Moolla subsidiary Salt of the Earth. As the current Trade Marks Act was only enacted in 1993 and bought into force in 1995, the prior law permitted the adoption and registration of a foreign trademark in South Africa, which did not count in Gap's favour.

The Court found the legality and propriety of Hirsch's adoption of the first two GAP trademarks beyond dispute, and stated that despite the slavish imitation of the GAP trademarks by Salt of the Earth, it was legal without any further substantive evidence.

In 2005, success turned in Gap's favour when the Court found that Salt of the Earth's registrations had not been used and ruled it to be expunged. This opened the door for Gap to use and register its marks and to source products from South Africa.

The success was not long-lasting as Gap failed in their attempt to interdict Salt of the Earth or Moolla's from further using the marks. A lengthly litigation and counter litigation followed as neither party could prevent the other from using the Gap trade mark.

A supplier of Gap Inc products, Stuttafords, subsequently displayed its products with a sign stating that its apparel is the "genuine" Gap article, which placed Salt of the Earth Creations back in the ranks, seeking an undertaking from the Gap Inc. and Stuttafords that they would not trade in Gap branded merchandise in the Republic, by relying on its common law rights in and to the Gap mark.

Instead of providing such an undertaking, Gap instituted an action against Kingsgate (the owners of Salt of the Earth at that point in time), on alleged unauthorised use and misrepresentation of the Gap trade mark. Kingsgate defence against "passing-off" was based on the fact that they and not Gap itself, established reputation, in the marks in South Africa.

The 2007 case was decided by the High Court in 2009, in favour of both Kingsgate and Gap, Inc on different matters.

At least for the time being, settlement between the parties has been reached.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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