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REPORTABLE
Republic of South Africa
IN THE HIGH COURT OF SOUTH AFRICA
(WESTERN CAPE HIGH COURT, CAPE TOWN)
Case Number: 16926/11
and 16926A/11
In the matter between:

ETRACTION (PTY) LTD

Applicant

and
TYRECOR (PTY) LTD

Respondent

JUDGMENT DELIVERED THIS DAY OF 5TH FEBRUARY 2014

SALIE-SAMUELS AJ:
This judgment is divided into two principal parts: the application for an interdict and
the counter application for partial expungement of the trade mark.
The parties were both legally represented. Mr.Seale, appeared for the Applicant and
the Mr. Micau for the Respondent.

2

The Application
[1]

The Applicant, Etraction (Pty) Ltd (hereafter the Applicant) seeks an interdict

restraining Tyrecor (Pty) Ltd (hereafter the Respondent) from infringing the
Applicant’s registered trade mark and costs. The application is supported by the
affidavit of Imtihaz Tayob Rahimtola, a duly authorised director of the Applicant. The
Applicant’s trade mark is INFINITY, registration number 2008/0612 in class 12 in
respect of “vehicle components and accessories; tyres, wheels, rims” dated 15 April
2008. The Applicant avers that the Respondent is infringing its rights by

“…using in relation to tyres and/or in relation to wheels and/or in relation
to tyre and wheel combinations, the trade mark INFINITY or a mark so
nearly resembling the Applicant’s aforementioned mark as to be likely to
deceive and/or to cause confusion”.

[2]

The Respondent, supported by the affidavit of Charl Pierre De Villiers, resists

the application. The primary basis of its defence is that it’s (the Respondent’s)
predecessor in title, Falck Trading (Pty) Ltd, commenced the use of the trade mark
INFINITY during 2006 as a consequence of which Respondent and its predecessor’s
use of the trade mark INFINITY predates the date of registration of the Applicant’s
trade mark. Respondent argues that such use provides it with a defence in terms of
section 36(1) of the Trade Marks Act 94 of 1993 (hereafter the Act). The Respondent
also makes a counter application for partial expungement of the trade mark in
respect of tyres, which will be dealt with later.

3

[3]

The parties traversed numerous issues that cast no light on their dispute, and

I will not refer to them in my judgment. The real issues between the parties in respect
of the application are as follows: Does the Applicant have a right to prevent the
Respondent from using the trade mark INFINITY registered in its name in the
Register of Trade Marks? Does section 36(1)(b) of the Act provide the
Respondent with a defence on the facts?

[4]

It is trite law that the requirements for obtaining a final interdict are: a clear

right, no other satisfactory remedy and proof of irreparable harm if the interdict is not
granted.
The first issue is therefore whether or not the Applicant has a clear right. It is
common cause that the Applicant is the registered proprietor of the INFINITY trade
mark. A trade mark proprietor has the exclusive right, subject to the provisions of the
Act, to use the trade mark. The primary provision of the Act which secure this right is
section 34(1) of the Act. The Applicant relies on section 34(1)(a) and in the
alternative section 34(1)(b) of the Act. The relevant portion of section 34(1)(a)
provides that

“The rights acquired by registration of a trade mark shall be infringed by –

(a) the unauthorised use in the course of trade in relation to goods or
services in respect of which the trade mark is registered of an
identical mark or of a mark so nearly resembling it as to be likely to
deceive or cause confusion”.

4

It is trite law that for there to be infringement in terms of section 34(1)(a) there must
be: (i)use of the identical or a confusingly similar mark, (ii) in the course of trade,
(iii) in respect of identical goods in relation to which the trade mark is registered. It is
also clear that if there is use of the identical mark in respect of identical goods, the
question of likelihood of deception or confusion need not be proved but is presumed.
On the facts in this matter, there is no need to consider section 34(1)(b) because the
trade mark INFINITY is registered in respect of tyres: there is consequently use of
the identical mark in respect of identical goods, not use in respect of similar goods
which is the hallmark of section 34(1)(b) of the Act.

[5]

The facts are that the Respondent does not deny using the trade mark in

respect of tyres and even though the Respondent contests the validity of the
registration of the trade mark INFINITY in respect of tyres, the Applicant has
established prima facie infringing use, even on the test in Plascon-Evans Paints
Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) (referred to as the
Plascon-Evans rule). The Respondent has raised both a defence and mounted a
counter application in response to the application. It is clear that if the counter
application succeeds, the Applicant has no right and that ends the matter. I am,
however, of the view that it is more appropriate to first deal with the Respondent’s
defence, and then the counter application, since even if the defence succeeds, the
counter application still has to be considered as it is not solely a defence to the
Application.

5

[6]

The Respondent’s defence is that section 36(1) of the Act bars the Applicant

from instituting infringement proceedings against the Respondent, as its predecessor
had commenced using the trade mark prior to the Applicant applying for registration
of INFINITY in its (the Applicant’s) name. The Applicant alleges in the founding
affidavit deposed to by Mr Rahimtola, that it commenced its use of the trade mark
INFINITY during 1995. Nothing turns on the date Applicant commenced using the
trade mark INFINITY as it bases its claim squarely on the registration which is dated
15 April 2008 (this is confirmed by a certificate from the Registrar of Trade Marks
attached to the Applicant’s documents marked exhibit M2). The 15th April 2008 is,
therefore, the first date from which the Applicant can claim the exclusive right to use
the trade mark INFINITY in South Africa.

[7]

The relevant portion of section 36(1) of the Act, provides that
“Nothing in this Act shall allow the proprietor of a registered trade mark to
interfere with or restrain the use by any person of a trade mark identical
with or nearly resembling it in relation to goods or services in relation to
which that person or a predecessor in title of his has made continuous and
bona fide use of that trade mark from a date –
(a) anterior to the date of first-mentioned mark in relation to those
goods or services by the proprietor or a predecessor in title of his;
or
(b) to the registration of the first-mentioned trade mark in respect of
those goods or services in the name of the proprietor or a
predecessor in title of his,

6

whichever is the earlier, or to object (on such use being proved) to the
trade mark of that person being registered in respect of those goods or
services under section 14.”

Webster & Morley Webster & Page: The South African Law of Trade Marks,
Company Names and Trading Styles 4ed paragraph 12.45.1 (page 12-79)
correctly argue that the aim of the section is to “preserve common law rights that are
antecedent to the rights of the registered proprietor”. The Act does not invest a prior
user with a right – it derives from the common law. How does a prior user obtain the
common law right to use the trade mark? Before answering this question I will refer
to the facts.

[8]

The Applicant, through the founding affidavit of Mr Rahimtola, obviates the

necessity for the Court to rely on the Plascon-Evans rule referred to earlier to
establish when the Respondent’s predecessor’s use commenced. The deponent
swears that:

“During 2006, I saw INFINITY tyres at an exhibition but was unable to trace
the products on sale in the trade. In 2007, the Applicant noted limited sales
of the INFINITY tyres but was not aware of the activities that gave rise to
those sales. However, in 2008 the Applicant heard that INFINITY tyres were
being imported into South Africa by the Respondent on an increasing
scale” (paragraph 14).

This evidence confirms the Respondent’s version that it and its predecessor has
made “continuous and bona fide use since July 2006, to date” (paragraph 14 of Mr

7

De Villiers answering affidavit). The question still arises, however, what is the basis
of the Respondent’s rights at common law?

[9]

The Respondent’s right to use the trade mark INFINITY was conferred by

implication by the person in China who supplied it with the tyres it imported,
whomsoever that person was. It is well established there is no need for anyone to be
aware of the identity of the trade mark proprietor: in Birmingham Vinegar Brewery
Co v Powell (1896) 13 RPC 235, 250 the Court held that the public may be misled
by mistaking one class of goods for another even though they may not know the
names of the makers of either (clearly each class consists of the one person’s
goods. Blanco White & Jacob Kerly’s Law of Trade Marks and Trade Names 12ed,
Sweet & Maxwell, London (1986) states that:

“It is not necessary to show that the customers who knew the goods of the
plaintiff’s firm by a particular name or get up knew anything whatever
about the plaintiff. It is immaterial that they did not even know his name,
for it is sufficient to prove that purchasers of his goods recognised, by the
use of the marks in question in connection with them that they were goods
of a particular class and show that such class is, in fact, constituted by his
goods” (page 373, paragraph 16-32; my emphases).

The existence of implied consent to use a trade mark granted by placing goods on
the market without any restrictions on exporting was confirmed by the Appellate
Division in Protective Mining & Industrial Equipment Systems (Pty) Ltd

8

(formerly Hampo Systems (Pty) Ltd) v Audiolens (Cape) (Pty) Ltd (the Pentax
case) 1987 (2) SA 961 (AD). Frank & Hirsch (Pty) Ltd v Roopanand Brothers
1987 (3) SA 165 (D) establishes that a trade mark proprietor who sells goods without
restriction unconditionally consents to it being resold in that form under the mark
(page 185B).

[10]

The Applicant in the founding affidavit gives no indication of the source of the

goods which it markets under the trade mark INFINITY and it does not allege that it
is the manufacturer of the wheels which it markets under that trade mark. The
Applicant has, throughout the proceedings, elected not to provide any direct
indication of its relationship to the INFINITY tyres which it markets. It is so highly
improbable that the Applicant would have described itself as “a trader in wheels,
tyres and related products” had it manufactured the goods in which it trades that a
relationship of that type is excluded. The significance of this finding is that the
Applicant is also an importer of the tyres which it markets under the INFINITY trade
mark. I agree with the submission of Mr Micau for the Respondent in that had the
Applicant claimed any common law rights predating its use of the trade mark, the
possibility of an action for passing-off must have been canvassed with its legal
representation, however, had been abandoned

In my view abandonment of the

possibility of a passing-off action strongly indicates a recognition that no enforceable
common law exclusive right existed.

[11]

Before I can conclude my finding whether the Respondent has the right to use

the trade mark, I need to satisfy myself that the Respondent is in fact the successor
in title of Falck Trading (Pty) Ltd. Counsels were requested to file additional heads

9

of argument dealing with the law in respect of successors or predecessors in title in
relation to juristic personalities. Indeed they obliged and the Court is indebted to
both counsel for the supplementary heads filed in that regard.

[12]

The success of the Respondent’s defence in terms of Section 36 depends

upon whether it is able to prove that it is to be regarded as the successor in the title
of an entity that made bona fide use of the trade mark INFINITY prior to the date of
registration of the applicant’s trademark.

In support of its succession, the

Respondent claims that Tyrecor Holdings (Pty) Ltd, a company which later changed
its name to Falck Trading (Pty) Ltd thereafter continued to do so for a period of
approximately 2 ½ years and that Falck Trading’s business, namely that of selling
tyres, was taken over by the Respondent during March 2009. The Respondent bears
the onus of proof in respect of the claimed prior use, either by itself or by its
predecessor in title. It insofar needs to discharge the burden of convincing this Court
that it had acquired these rights from Falck Trading.

[13]

On behalf of the Applicant, it is contended that the acquisition of the business

of one company by another must take place by means of a contract, one which
would transfer the business from the one company to the other. In response, the
Respondent contends that the absence of documentation relating to the transfer of
the business from Tyrecor Holdings (Pty) Ltd does not mean that it did not occur or
moreover, that Tyrecor Holdings was not a predecessor in title regarding the
importation of INFINITY branded tyres.

10

[14]

In adjudicating this issue in dispute, I have also considered the redacted

minutes of a meeting of Respondent of 8 November 2007 (paragraph 15.2, page 146
of the infringement application) which reads under the heading “shareholding” as
follows:

“Falck Trading:
Falck Trading will be a property holding company and will import till Feb
by which time Tyrecor licences will be sorted out”.

The Respondent submits further that no formal documents or agreements exist
regarding the take-over of the business.

Due to the common shareholding and

directorship of the various companies, Respondent contends: “everything was done
verbally…” (paragraph 15.3, page 147 of the infringement application.)

I am

persuaded that there was a transfer or an assignment of rights and obligations
between the predecessor and successor in relation to the import and sale in
INFINITY branded tyres

.

That the Respondent appears not to have a written

contract in its possession or that relevant provisions of the Companies Act have not
been complied with, does not vitiate such a transfer of rights and the Respondent
faces sanctions embodied in the Companies Act. However, it does not in my view
affect the Respondent’s defence available in terms of Sections 36 of the Act.

[12]

The upshot of my finding that the Respondent had a right to use, and its

predecessor in title, Falck Trading (Pty) Ltd, had used the trade mark prior to the
Applicant seeking registration of the trade mark INFINITY, is that the application for

11

an interdict fails and the defence raised by section 36(1) of the Act succeeds with
costs.

The Counter Application
Under Case No 16926A/2011
In the matter between
ETRACTION (PTY) LTD

Applicant

And
TYRECOR (PTY) LTD

Respondent

In re: the counter-application of
TYRECOR (PTY) LTD

Applicant

And
ETRACTION (PTY) LTD
THE REGISTRAR OF TRADE MARKS

[13]

First Respondent
Second Respondent

The Respondent in the main application (which will continue to be referred to

as the Respondent) counter applies for the partial expungement of the trade mark by
the deletion of “tyres” from the Applicant’s registration. The Respondent argues that
from 2006 the Applicant was aware of its use of the trade mark in respect of tyres
and consequently when the Applicant sought registration of the trade mark in the
Applicant’s name, it did not have a bona fide claim to proprietorship of the trade mark

12

and had no bona fide intention of using the trade mark in respect of the goods in
respect of which it is registered. The Respondent joined the Registrar of Trade
Marks as a respondent in its counter application as the Registrar would be required
to alter the registration of the trade mark if the counter application succeeded.

[14]

The Applicant, in opposing the application for partial expungement, asserts

that it had the bona fide intention of using the trade mark in relation to tyres and in
amplification submits that when it filed its trademark application to register the
trademark INFINITY in class 12, it was contemplated that the sourcing and branding
of Applicant’s INFINITY tyres would follow. It is further argued by the Applicant that
it had the “definite intention” (paragraph 14.8, Page 10 of the Expungement
Application) to use the mark INFINITY as its principal trade mark in relation to its
own range of tyres, wheels and rims and still has the intention of doing so. In reply,
it is contended on behalf of the Respondent that the Applicant’s absence of any use
of the trade mark INFINITY on tyres do not support the bold assertions that it wishes
to use the trade mark and it would appear that it clearly never had a definite intention
to use.

[15]

The Respondent bases its application on three sections of the Act: 10(3),

10(7) and 27(1)(a). The essence section 10(3) is prohibition against registration of a
trade mark in respect of which “the applicant for registration has no bona fide claim
to proprietorship”; section 10(7) prohibits the registration of a mark “the application of
which was made mala fide; and section 27(1)(a) empowers an interested person to
apply for removal of trade mark from the register if the:

13

“trade mark was registered without any bona fide intention on the part of
the applicant for registration that it should be used in relation to those
goods or services by him or any other person permitted to use the trade
mark as contemplated by section 38 and there has in fact been no bona
fide use of the trade mark in relation to those goods or services by any
proprietor thereof or any person so permitted from the time being up to the
date three months before the date of the application”.

Notwithstanding the manner in which the Respondent has pleaded in the counter
application (using “and” in the final line of paragraph 20.4 of De Villiers’ answering
affidavit) should the Respondent succeed in terms of any of the sections, there will
be no need to traverse any other.

[15]

There is generally no bar to a person adopting for use and registering a trade

mark in South Africa where that trade mark is already used by another person
abroad: Victoria’s Secret Incorporated v Edgars Stores Ltd (the Victoria’s
Secret case) 1994 (3) SA 739 (AD). In that case the question was whether Edgars
was entitled to adopt and register the trade mark, VICTORIA’S SECRET, in South
Africa, given that Victoria’s Secret Incorporated was the proprietor (and originator) of
the trade mark in the USA. Victoria’s Secret Incorporated had applied for registration
in South Africa subsequent to Edgars’ application for registration of the identical
trade mark. The Court set out the law as follows:

14

“… a trade mark is purely a territorial concept; it is legally operative or
effective only within the territory in which it is used and for which it is to
be registered. Hence, the proprietorship, actual use, or proposed use of
a trade mark mentioned in s 20(1) are all premised by the subsection to
be within the RSA” (page 745G).

The Court in the Victoria’s Secret case held that: “In the case of a foreign trade mark,
there is no legal bar to its adoption in South Africa unless it is attended by something
more …” (page 746F). The Court explained that “unless it is attended by something
more” meant that the adoption should not be attended by “any factors that may have
vitiated or undermined his right or title to the proprietorship thereof. Those factors
would comprehend dishonesty, breach of confidence, sharp practice, or the like”
(page 747H-I).

[16]

With reference to the matter before me, the Applicant had adopted the trade

mark INFINITY as the trade mark was already beisng used by the person from whom
the Applicant obtained the INFINITY merchandise which it sold.

It struck me highly

relevant in this matter, that sometime during March 2008 business attempts including
a business meeting) were entertained by and between the parties. This in essence
took the form of the Applicant trading in INFINITY branded tyres and selling thereof
to the Respondent.

These discussions though did not result in a successful

business transaction.

The Applicant’s adoption of the trade mark INFINITY by

applying for its registration two weeks after discussions with the Respondent
considered in conjunction with the Applicant’s delay from the time of registration

15

of the trade mark until 17 August 2011 before instituting proceedings, as well as its
use of the trade mark from 1995 until 2008 before applying for registration,
constitutes conduct approaching “sharp practice”. Applicant’s conduct vitiated its
application for registration as a bona fide claim to proprietorship of the trade mark is
a primary requirement1 for registration.

[17]

The Court in Broadway Pen Corporation & Another v Wechsler & Co (Pty)

Ltd and Others (the Everglide case) 1963 (3) SA 434 (T) found that an applicant’s
claim is only bona fide if he/she/it intends to use the trade mark in respect of
his/her/its own goods. The salient facts of that case were that Broadway, a USA
corporation sought the expungement of the trade mark EVERGLIDE, which was
registered in Wechsler’s name in South Africa. Wechsler had claimed proprietorship
of the trade mark EVERGLIDE in its application for registration, despite the fact that
it (Wechsler) has previously sold EVERGLIDE trademarked goods. It had also
previously acknowledged Broadway’s ownership of the trade mark by unsuccessfully
negotiating with Broadway to become the exclusive distributor of EVERGLIDE pens
in South Africa. The trade mark EVERGLIDE, indicated that the goods had their
origin in Broadway who had placed or at whose behest the trade mark was placed
on the goods, not Wechsler. The Court held: “it is clear from the context … that
whoever used the mark used it as Burnham’s or Broadway’s mark to indicate its
goods”. The Court held that Wechsler intended “merely to use the mark on behalf of
Burnham or Broadway” and ordered expungement of the trade mark because the
1

Martin BSC The situs of the registered trade mark right considered in the light of parallel importation
LLD thesis, University of the Western Cape (2007) 211 argues that this is the basic requirement because
the other aspects of the applicant’s qualifications, such as him being required to have a bona fide intention
to use the trade mark (s 10(4)), and him not having made a mala fide application for registration (section
10(7), qualify his claim to proprietorship.

16

“…facts point[ed] irresistibly to the conclusion that Wechsler’s intention
was to use the mark in South Africa either as sole representative of or
otherwise for and on behalf of Burnham or Broadway so as to indicate
that the writing instruments were the latter’s and not its own goods”
(page 446B).

The absence of an intention to use the trade mark in respect of its own goods
disqualified Wechsler from claiming proprietorship. The phrase “use in respect of its
own goods” means that the person must intend to use the trade mark in respect of
goods which as a matter of law are regarded as having their origin in him/her/it. This
is because the definition of a trade mark in section 2(1) of the Act requires the
person to use the trade mark to distinguish the goods in relation to which it is used or
proposed to be used “… from the same kind of goods … connected in the course of
trade with any other person [other than the user]”.

[18]

There are three forms of trade mark use: affixation to goods, placement of

trademarked goods on the market and advertisement of trademarked goods.2 The
relevant use for the establishment of origin is affixation since the affixation of the
trade mark creates trademarked goods, as a result of which all subsequent users
indicate origin in the trade mark proprietor. The Applicant did not affix the trade mark
INFINITY to any goods: it also imported the INFINITY trademarked goods. This is
additional proof that the Applicant did not intend using the mark on its own goods.
2

Martin “Some comments on the infringement of registered trade marks by advertisement of goods on the
Internet” (2013) 1 South African Intellectual Property Law Journal 25 (forthcoming) relying on Beier F-K
“The doctrine of exhaustion in EEC trademark law – scope and limits (1979)10 International Journal of
Industrial Property and Copyright 23.

17

Naturally a trade mark proprietor need not personally affix the trade mark to the
goods, but the affixation must be done at his/her/its behest or with his/her/its consent
for the goods to have their origin in the trade mark proprietor.

[19]

A factor which indicates that the Applicant was not bona fide in its application

for registration is the fact that it applied for registration knowing of the Respondent’s
right to use the trade mark. A trader who applies for registration of a trade mark
knowing of another person’s rights does not act bona fide: the Sidewalk Cafes (Pty)
Ltd t/a Diggers Grill v Diggers Steakhouse (Pty) Ltd & Another 1990 (1) SA 192
(T). In this case, the defendant, which I shall call Steakhouse, claimed the exclusive
right to the trade mark DIGGERS GRILL for the whole of SA, despite its manager
actually knowing that Sidewalk Café’s was operating a restaurant under that name in
Natal (as it then was): this was held not to be bona fide claim. The Court found that
respondent was not entitled to claim exclusive proprietorship in the whole country
and to obtain exclusive rights to the trade mark thereby depriving applicant of his
vested rights in the trade mark.

[20]

The parallels between Wechsler’s actions in the Everglide case and the

Applicant’s are clear: the Applicant used the trade mark in respect of the goods
which it had imported, not goods to which the trade mark INFINITY had been affixed
at its (the Applicant’s) behest. The Applicant, therefore, used the trade mark to
indicate origin in the person who trademarked the goods. There are also clear
parallels between the conduct of Steakhouse in the Digger’s Grill case and the
Applicant in the present case: the Applicant was aware that the Respondent was

18

using the trade mark to an increasing degree when it applied for registration of the
trade mark.

[21]

The Applicant’s conduct in adopting the trade mark when it did not have a

bona fide claim to proprietorship of the trade mark INFINITY at the time of its
application for registration, because it was aware of the Respondent’s use of the
trade mark, and what I find as the absence of an intention on its part to use the trade
mark INFINITY in relation to its goods, results in its application being completely
vitiated. The counter application succeeds, with costs, and the Registrar is directed
in terms of section 24(1) of the Act, to expunge the word “tyres” (spelt “tires”) from
the Applicant’s trade mark registration.

___________________
SALIE - SAMUELS, AJ



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