THE SUPREME COURT OF APPEAL OF SOUTH AFRICA

JUDGMENT

Reportable
Case No: 900/2015

In the matter between:

PEPKOR RETAIL (PROPRIETARY) LIMITED

APPELLANT

and

TRUWORTHS LIMITED

RESPONDENT

Neutral citation:  Pepkor Retail (Pty) Ltd v Truworths Ltd (900/2015) [2016]

ZASCA 146 (30 September 2016)

Coram:
Navsa, Cachalia, Zondi, Mathopo and Van der Merwe JJA

Heard:
29 August 2016

Delivered:
30 September 2016

Summary:
Trade mark ─ registered trade mark THE LOOK used in fashion
retail industry ─ mark has no inherent or acquired distinctiveness ─ removal
from the trade mark register ordered.

______________________________________________________________

ORDER
______________________________________________________________

On appeal from: Western Cape Division of the High Court, Cape Town
(Mantame J sitting as court of first instance):
1. The appeal is upheld with costs, including the costs of two counsel.
2. The order of the court a quo is set aside and replaced with the following:
„(a)
The main application is dismissed with costs, including the costs of two
counsel.
(b)
The counter-application is granted and an order is made:
(i)
cancelling the first respondent‟s trade mark registration number 1998/05493-5
in classes 16, 25 and 35;
(ii)
directing the registrar of trade marks to cancel the said registrations and to
remove them from the trade marks register;
(iii)
directing the applicant to pay the costs of the counter-application, including
the costs of two counsel.
(c)
The application to strike out is granted with costs.‟
______________________________________________________________

JUDGMENT
______________________________________________________________

Van der Merwe JA (Navsa, Cachalia, Zondi and Mathopo JJA
concurring):

[1] The respondent in this appeal, Truworths Limited (Truworths), is the
proprietor of the registered trade mark THE LOOK (the mark). The appellant,
Pepkor Retail (Proprietary) Limited, inter alia, trades under the name
Ackermans and for convenience I will refer to the appellant by that name.
Ackermans makes use of the phrase THE LOOK FOR LESS (the phrase).
Truworths applied in the Western Cape Division, Cape Town, for an order
interdicting and restraining Ackermans from using the phrase. Ackermans
filed a counter-application for the removal of the mark from the register of
trade marks. The court a quo (Mantame J) granted the interdict and refused

the counter-application. It granted leave to appeal to this court. The appeal is
directed at the whole of the order of the court a quo.

[2] Truworths and Ackermans are competitors in the fashion retail industry.
Both predominantly sell clothing, footwear, headgear and other fashion-
related goods. Ackermans is, however, regarded as a „value‟ retailer aimed at
selling at affordable prices.

[3] The mark was registered in terms of the Trade Marks Act 194 of 1993
(the Act), with effect from 1 April 1998. It was registered in classes 16 (printed
matter), 25 (clothing, footwear, headgear) and 35 (offering for sale and the
sale of goods in the retail and wholesale trade). However, it was only during
2009, that Truworths commenced making any discernible use of the mark. It
used the mark on labels and swing tags attached to its goods. Labels are
permanently attached to the goods, whilst swing tags are intended to be
removed once the item is put to use. Truworths also used the mark in
customer mailers, on posters and on its website.

[4] In the founding affidavit on behalf of Truworths the following appears:
„Truworths has several stores across the country trading under THE LOOK trade
mark. THE LOOK store in Stellenbosch was opened in the Eikestad Mall on 26
November 2009. THE LOOK store in Balfour Park, Johannesburg was opened on 22
July 2010. THE LOOK store in Savannah Mall, Polokwane was opened on 28
October 2010. THE LOOK store in Stanger, KwaZulu-Natal was opened on 21
October 2010 and the store in Brits Mall, Brits was opened on 28 October 2010.
Photographs of the aforementioned five stores are annexed hereto marked “DP2”.‟
One of the photographs is reproduced hereafter. It is quite clear that what is
set out in the affidavit is at best a misdescription and at worst disingenuous.
As can be seen from the photograph it is a TRUWORTHS store with that
name being much more prominent in size and scale with „THE LOOK‟ as an
addendum after a dash, minute in comparison. It is probably more truthful for
it to be described as a TRUWORTHS – THE LOOK store.

A further five TRUWORTHS ─ THE LOOK stores were opened during 2014.

[5] During 2011 Ackermans embarked on an extensive rebranding
exercise. This led to the conceptualisation of the phrase THE LOOK FOR
LESS. During March 2012 Ackermans commenced use of the phrase in its
promotional material and in its stores. In respect of the signage of Ackermans
stores, the phrase was used on the back of the store entrance signs, so that it
was generally only visible to customers leaving the store. On these signs,
Ackermans in turn, gave more prominence to the words THE LOOK, than the
words FOR LESS. Ackermans also has a store situated at the Eikestad Mall
in Stellenbosch.

[6] Towards the end of 2013, Truworths objected to the use of the phrase
by Ackermans. Subsequent negotiations led to an agreement in terms of
which Ackermans essentially gave the following undertakings:
„1.
We will refrain from using the trade mark THE LOOK on its own.
2.
We will never use the phrase THE LOOK FOR LESS or the words THE
LOOK as a name of a retail store or as a label or swing tag in relation to any clothing,
footwear or headgear.‟
The agreement was reached on 5 December 2013.

[7] During the latter part of 2014, Truworths alleged that the signage at the
back of the Ackermans store entrance sign at the Eikestad Mall, constituted
both a breach of the undertaking and an infringement of the mark. Ackermans
disagreed. The parties entered into negotiations but did not reach an
agreement. Truworths consequently launched the application in the court a

quo. In essence, its case was that the aforesaid use by Ackermans of the
phrase on its signage as well as the use thereof in its in-store advertisements,
and in print and television advertisements, constituted a breach of the
undertaking, infringement of the mark in terms of s 34(1)(a) or s 34(1)(c)1 of
the Act and the passing off of its goods as those of Truworths.

[8] Ackermans opposed the main application and filed a counter-
application. The counter-application was for the expungement of the mark
based on the provisions of s 10(1) and 10(2)(a), (b) or (c) of the Act.2 Despite
the fact that it had filed voluminous papers in answer to the main application,
Ackermans dealt with issues related to the main application in its replying
affidavit to the counter-application. Truworths accordingly filed an application
for the striking out of portions of Ackermans‟ replying affidavit in the counter-
application, on the ground that they impermissibly dealt with issues that
related only to the main application. This was followed by an answering
affidavit to the application to strike out.

[9] The court a quo found for Truworths on all the grounds that it had relied
upon. It also granted the striking out application. Before us, however, counsel
for Truworths disavowed reliance on breach of the undertaking and passing
off. Only the infringement of the mark in terms of the Act remained in issue on
appeal in respect of the main application. Counsel were therefore rightly in
agreement that a finding that the counter-application for the removal of the
mark was good, would be dispositive of the appeal. I proceed to consider the
counter-application.

1 Sections 34(1)(a) and (c) provide as follows:
„The rights acquired by registration of a trade mark shall be infringed by:
(a) the unauthorized 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;
. . .
(c) the unauthorized use in the course of trade in relation to any goods or services of a mark
which is identical or similar to a trade mark registered, if such trade mark is well known in the
Republic and the use of the said mark would be likely to take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the registered trade mark,
notwithstanding the absence of confusion or deception: Provided that the provisions of this
paragraph shall not apply to a trade mark referred to in section 70(2).‟
2 Sections 10(1) and 2(a), (b) and (c) are set out in full below in para 12 of this judgment.

[10] The purpose of a trade mark is to indicate the origin of goods or
services in connection with which it is used, that is, to serve as a „badge of
origin‟. (See Beecham Group plc & another v Triomed (Pty) Ltd [2002] ZASCA
109; 2003 (3) SA 639 (SCA) para 8; and AM Moolla Group Ltd & others v The
Gap Inc & others [2005] ZASCA 72; 2005 (6) SA 568 (SCA) para 38 at 587B-
D.) The fundamental function of a trade mark is thus to distinguish the goods
or services of one person from the goods or services of another. In order to
fulfil this function, a mark must be „capable of distinguishing‟ goods or
services within the meaning of s 9 of the Act, which provides:
„9
Registrable trade marks
(1)
In order to be registrable, a trade mark shall be capable of distinguishing the
goods or services of a person in respect of which it is registered or proposed to be
registered from the goods or services of another person either generally or, where
the trade mark is registered or proposed to be registered subject to limitations, in
relation to use within those limitations.
(2)
A mark shall be considered to be capable of distinguishing within the meaning
of subsection (1) if,  at the date of application for registration, it is inherently capable
of so distinguishing or it is capable of distinguishing by reason of prior use thereof.‟

[11] Thus, for a mark to be registrable in terms of the Act (and for it to
remain on the register), it must have inherent distinctiveness or, if not, it must
have acquired distinctiveness by reason of prior use. Whether a mark
possesses inherent or acquired distinctiveness is a question of fact that must
be determined with regard to all the relevant circumstances of each particular
case. (See G C Webster et al Webster and Page: South African Law of Trade
Marks (Service Issue 19, 2015) at 3-48(7) para 3.40.2; James Mellor et al
Kerly’s Law of Trade Marks and Trade Names 15 ed (2014) at 190 para 8-
017.)  The relevant  circumstances include the nature of the mark and of the
relevant  goods or  services, the  industry in which the mark is intended to be
used or was used and the perception of the average consumers in that
industry.

[12] It is now necessary to refer to s 10 of the Act. Sections 10(1) and (2)
provide:

„10
Unregistrable trade marks
The following marks shall not be registered as trade marks or, if registered, shall,
subject to the provisions of sections 3 and 70, be liable to be removed from the
register:
(1)
A mark which does not constitute a trade mark;
(2)
a mark which ─
(a)
is not capable of distinguishing within the meaning of section 9; or
(b)
consists exclusively of a sign or an indication which may serve, in trade, to
designate a kind, quality, quantity, intended purpose, value, geographical origin or
other characteristics of the goods or services, or the mode or time of production of
the goods or of rendering of the services; or
(c)
consists exclusively of a sign or an indication which has become customary in
the current language or in the bona fide and established practices of the trade.‟

[13] However, s 10(2) is subject to the following proviso:
„Provided that a mark shall not be refused registration by virtue of the provisions of
paragraph (2), or if registered, shall not be liable to be removed from the register by
virtue of the said provisions if at the date of the application for registration or at the
date of an application for removal from the register, as the case may be, it has in fact
become capable of distinguishing within the meaning of section 9 as a result of use
made of the mark.‟

[14] I now turn to s 10(2)(a). There is no evidence that Truworths made use
of the mark before it was registered. Therefore, the question is whether
Ackermans has shown that the mark is liable to be removed from the register
for lack of inherent distinctiveness.

[15] A mark that consists merely of words descriptive of goods or services
in a particular class, is not inherently capable of distinguishing the goods or
services of a particular person in that class. In this case the question is
whether the mark is inherently capable of indicating to the average customer
in the fashion retail industry that the goods in respect of which it is used,
originate from Truworths and not from any other fashion retailer. Put
differently, in the words of the authors of Webster and Page at 3-64(2) para
3.51.3, the question is „whether the perceptions and recollections the signs

would trigger in the mind of the average consumer of the specified goods or
services would be origin specific or origin neutral‟. (Footnote omitted.)

[16] Ackermans demonstrated that a common meaning of the words „the
look‟ in the English language is style or fashion. Dictionary examples of the
use of the words include „the new look for summer‟, „the look this year will be
relaxed and casual‟ and „the preferred look for fall‟. Truworths admitted that
the words „the look‟ are used in ordinary language in the context of fashion
and expressly accepted that they are used by the fashion industry to indicate
that a particular item of apparel or outfit is current or fashionable. Ackermans
produced undisputed evidence of extensive use of the words „the look‟ in the
fashion retail industry. Other competitor fashion retailers such as Woolworths,
Edgars, Mr Price, Queenspark, Foschini and Markhams all make use of the
phrase „get the look‟, as well as numerous other derivatives of the words „the
look‟. Examples abound. I refer only to a few. Woolworths, inter alia, uses „the
lush new look‟, „shop the look‟, „the boho bronze look‟, „a fresh take on the
sporty look‟, „get the lace  look‟, „you can shop the look online‟ and „get the
look online‟. Edgars, inter alia, makes use of the phrases „get the white look‟,
„get the look of the moment‟ and „jackets are so required to get the look‟.

[17] The ineluctable conclusion is that in the fashion retail industry, the term
„the look‟ carries the universal ordinary meaning of fashionable or trendy
clothes or outfits. It follows that the mark is not a „covert or skilful allusion‟ to
these goods, as counsel for Truworths argued with reference to Webster and
Page at 3-48(13) para 3.43. He fairly conceded that once this conclusion is
reached, the mark is not inherently distinctive. For these reasons I find that
the mark is not inherently capable of distinguishing the goods of Truworths.

[18] In my judgment, the mark also falls to be removed from the register by
reason of both s 10(2)(b) and (c).  The mark has no figurative element. Its
words have a generic descriptive meaning in general use in the industry.
Truworths can have no monopoly over these words. On the evidence, the
mark consists exclusively of words that serve to designate the kind of goods
in the trade or at least a characteristic thereof, namely fashionable clothes or

outfits. The evidence similarly established that the mark consists exclusively
of words which have become customary in the current language of the trade.

[19] The next question is whether at the date of the counter-application, the
mark had as a result of the use thereof nevertheless become capable of
distinguishing the goods of Truworths. Distinctiveness may be acquired within
the meaning of the proviso to s 10(2) of the Act, if, as a result of the use of a
mark, it is recognised by the average consumer in the industry as belonging to
a particular person.

[20] In this regard, Truworths did not produce evidence of a market survey
or any other independent evidence reflecting the public perception of the mark
in the market place. The two affidavits it introduced in reply are of no
assistance in this regard. Both the deponents thereto have, for many years,
been involved in the design and manufacture of clothes. They are members of
separate close corporations that supply clothes to Truworths, and are not
qualified to speak for the average consumer in the industry. That may be the
reason why both of them expressed their views in respect of the public
perception in tentative terms. They respectively said „To my understanding,
THE LOOK is indeed widely associated in the minds of the public with
Truworths as a result of the extensive use Truworths has made of the mark‟
and „I would be very surprised to learn that THE LOOK is not regarded as
associated with Truworths in the market‟.

[21] The evidence indicated no more than that the mark had been put to
use. In this regard counsel for Truworths emphasised the evidence of the
substantial combined turnover of the first five TRUWORTHS ─ THE LOOK
stores for the years 2011 to 2014, and also that the turnover in respect of
clothes bearing THE LOOK swing tags for the period from October 2013 to
September 2014 conservatively amounted to some R117 million. But use
does not equal distinctiveness. (See Beecham para 15 at 648F.) The use of a
mark in itself will not render it capable of distinguishing. The question is
whether the use resulted in distinctiveness. Were such evidence available,
Truworths would no doubt have adduced it. The lack of evidence that the

mark acquired distinctiveness through use is compounded by the common
cause fact that the mark was without exception used in close conjunction with
the well-known marks TRUWORTHS and BASIX. I am satisfied that the mark
did not acquire distinctiveness as a result of its use.

[22] It follows that the counter-application for removal of the mark should
have been granted. In the circumstances the appeal against the order in the
main application must also succeed. The Registrar of Trade Marks was cited
in the counter-application but played no part in the proceedings. The order in
the application to strike out was based on trite principle and must stand. The
costs of two counsel were justified in this court as well as in respect of both
the main application and the counter-application in the court a quo.

[23] In the result the following order is issued:
1. The appeal is upheld with costs, including the costs of two counsel.
2. The order of the court a quo is set aside and replaced with the following:
„(a)
The main application is dismissed with costs, including the costs of two
counsel.
(b)
The counter-application is granted and an order is made:
(i)
cancelling the first respondent‟s trade mark registration number 1998/05493-5
in classes 16, 25 and 35;
(ii)
directing the registrar of trade marks to cancel the said registrations and to
remove them from the trade marks register;
(iii)
directing the applicant to pay the costs of the counter-application, including
the costs of two counsel.
(c)
The application to strike out is granted with costs.‟

__________________
C H G van der Merwe
Judge of Appeal

For Appellant:

J C Butler SC (with him B J Vaughan)
Instructed by:
Werksmans Attorneys, Stellenbosch
Webbers Attorneys, Bloemfontein

For First Respondent:
A R Sholto-Douglas SC (with him M Maddison)
Instructed by:
Spoor and Fisher Attorneys, Claremont
Phatshoane Henney Attorneys, Bloemfontein

THE SUPREME COURT OF APPEAL
REPUBLIC OF SOUTH AFRICA

MEDIA SUMMARY – JUDGMENT DELIVERED IN THE SUPREME COURT OF APPEAL

From: The Registrar, Supreme Court of Appeal
Date: 30 September 2016
Status: Immediate
PEPKOR RETAIL (PTY) LTD v TRUWORTHS LIMITED
Please note that the media summary is intended for the benefit of the media and does not
form part of the judgment of the Supreme Court of Appeal

1.
The respondent, Truworths Limited (Truworths), is the proprietor of the registered
trade mark THE LOOK (the mark). The appellant, Pepkor Retail (Pty) Ltd (Ackermans), uses
the phrase THE LOOK FOR LESS (the phrase). Truworths applied in the Western Cape
Division of the High Court for an interdict restraining Ackermans from using the phrase.
Truworths’ case, in essence, was that the use of the phrase constituted an infringement of the
mark. Ackermans filed a counter-application for removal of the mark from the register of
trade marks, principally on the ground that it had no inherent or acquired distinctiveness. The
Western Cape Division granted the interdict and refused the counter-application. Ackermans
appealed to the Supreme Court of Appeal (SCA).

2.
Today the SCA upheld the appeal of Ackermans. The SCA held that the mark
consisted only of words that, in the fashion retail industry, carry the universal ordinary
meaning of fashionable or trendy clothes or outfits. Thus, the SCA held that the mark had no
inherent distinctiveness. The SCA also held that the mark had not acquired distinctiveness
through use. The SCA accordingly ordered the removal of the mark THE LOOK from the
register of trade marks and set aside the interdict that prohibited the use of the phrase THE
LOOK FOR LESS by Ackermans.
--ends--