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
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
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
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
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
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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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