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In the New Balance case discussed last month the Supreme Court
of Appeal also re-affirmed the principle of territoriality of trade
marks. New Balance, having failed to prove relevant use of its P-F
FLYERS and P-F trade marks in South Africa, had tried to rely on
its overseas reputation in arguing that Mr Dajee had no bona fide
claim to proprietorship of his POSTURE FOUNDATION – PF
trade mark in South Africa.
In his evidence Mr Dajee had said that in 1996 he was looking
for a new trade mark and recalled the trade mark POSTURE FOUNDATION
P-F but he believed that the use of the mark had long since been
abandoned and had not been used anywhere for many years. He was
satisfied that the mark was unknown to consumers in South Africa
and he alleged that he had adopted and registered the trade mark in
good faith in 1996.
The meaning of a "proprietor" of a mark and the
relevance of goodwill and reputation was a particularly hot topic
in South Africa in the 1980s and 1990s. There were a number of
reasons for this. Firstly, our common law did not recognise a
reputation without goodwill. Secondly, the Trade Marks Act did not
contain a provision dealing with the protection of foreign well
known trade marks (in terms of the provisions of Section 6bis of
the Paris Convention). Thirdly, the economic sanctions at the time
provided fertile grounds for local entities to adopt trade marks
which, while well known abroad, had no reputation and goodwill in
South Africa so there was nothing, in law, the proprietors of such
trade marks could do to stop this. Those of you who dined in the
Hard Rock Café in Cape Town in the 1980s may be surprised to
learn that there was no link between that restaurant and the
already then well known Hard Rock Cafés throughout the
world. More obscure was the Dallas restaurant in Pretoria, which
was not connected with what was then the very popular Dallas TV
series.
McDonald's was more fortunate because the use by the local
entitity of the McDONALD'S trade mark was minimal and by the
time McDonald's sought to protect its McDONALD'S trade
marks in South Africa, international sanctions were over and the
new Trade Marks Act had come into force on 1 May 1995 giving
statutory protection to well known trade marks. McDonald's
accordingly succeeded both on interdicting third party use of the
McDONALD'S trade mark and in defending its various
McDONALD'S trademark registrations from a non-use cancellation
attack on the grounds that its marks were well known, even though,
at that time, the McDONALD'S trade mark had never been used in
South Africa. This then paved the way for the countless genuine
McDONALD'S food outlets which we see in South Africa today.
Another area where there have been a number of issues with
regard to the adoption in South Africa of foreign trade marks is in
the clothing industry.
The most high profile manifestation of this is the recent
opening of genuine GAP stores, the culmination of litigation
between the South African claimants to the GAP trade mark and US
Gap Corporation, which litigation lasted for well over 10 years. In
reaffirming the point of law on proprietorship in the New Balance
case, the SCA quoted the Victoria's Secret case, a leading
trade mark case of the early 1990s. Despite the protestations of
the US Victoria's Secret trade mark owner, there was nothing
that they could legally do to stop the adoption by Edgars of the
Victoria's Secret trade mark in South Africa for their own
range of lingerie.
The situation with the POLO trade mark in South Africa is
interesting. In the USA and countless other jurisdictions worldwide
Ralph Lauren is the owner of the word mark POLO together with the
well known polo player device. However POLO clothing sold in South
Africa, also with a polo player device, is not connected in any way
with Ralph Lauren. As illustrated in the comparison of the two
trade marks, the only differences are the inclusion of the
additional trade mark RALPH LAUREN and the fact the polo player
devices are slightly different, the most noticeable difference
being that the South Africa polo horse faces right while the US
polo faces left. As this trade mark appears prominently on the
breast pocket of shirts (and other clothing) without any additional
word marks (those are typically found inside the collar), the
easiest way in practice to identify whether a POLO shirt is of US
or South African extraction is to see whether the horse is running
towards the centre (US) or away (SA).
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How To Defend A Trade Mark
