New Balance Athletic Shoe Inc v Dajee NO (251/11)  ZASCA
This matter relates to an appeal, by New Balance Athletic Shoe,
Inc ("New Balance"), against a decision by the Registrar
of Trade Marks (upheld in first appeal to North Gauteng High Court)
to expunge trade mark nos. 1972/1361 P-F FLYERS and B1965/02999 P-F
("New Balance trade marks" or "the trade
marks") on the grounds of non-use in terms of section 27(1)(b)
of the Trade Marks Act 194 of 1993.
In expungement proceedings, in terms of section 27(1)(b), the
onus of proving relevant use of the trade marks under attack falls
on the trade mark proprietor. The relevant period is defined as a 5
year period ending 3 months before the expungement application is
launched. The Supreme Court of Appeal was given an opportunity to
examine the evidence provided in defending the expungement
application, and made various findings relating to the level of
evidence that is required of a trade mark holder in order to defend
a non-use expungement application.
The Supreme Court of Appeal referred to the onus with approval
as it was to be expected that the trade mark proprietor would have
comprehensive and peculiar knowledge of the use of the trade
In defending the trade marks New Balance claimed use of the
trade marks "during the past 5 years", provided pictures
of their South African store, pictures of footwear in the store and
pictures of models displaying footwear. They also claimed turnover
in the last 5 years of R700000 and promotional expenditure of
R250000, in South Africa. These claims were made by the General
Manager in South Africa and corroborated by 3 executives of New
Balance South Africa.
The Supreme Court of Appeal noted that the evidence did not
include any invoices or delivery notes recording purchases or
receipt of stock that was claimed to have been sold, no invoices
recording sales, no accounting records of transactions or any other
documentary evidence to prove that products had been sold. The
Supreme Court of Appeal went on to state that what is required to
overcome the burden of proof in defending non-use claims is
"...at the least, is clear and unambiguous factual
evidence that brings the matter within the terms of the
The Supreme Court of Appeal went on to find that the evidence
advanced by New Balance was insufficient to carry the burden of
proof required to defend the trade marks under attack.
The important lesson to be learnt from this case is that the
trade mark proprietor will need to provide clear documents
evidencing proof of sales of goods (or receipt of stock) in order
to defend expungement proceedings. Trade mark proprietors should
consider evaluating their current receipts to ensure that these
documents clearly indicate trade marks used in relation to the
products sold/received, as such documents will be crucial in
defending non-use expungement attacks.
The Supreme Court of Appeal also re-affirmed the principle of
territoriality and confirmed that a person can adopt a mark as
their own, in South Africa, even if it has been used in a foreign
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