THE SUPREME COURT OF APPEAL
OF SOUTH AFRICA

Reportable
Case No 123/2004

In the matter between:

A M MOOLLA GROUP LIMITED

First Appellant
A M MOOLLA CLOTHING
(PROPRIETARY) LIMITED

Second Appellant
SALT OF THE EARTH CREATIONS
(PROPRIETARY) LIMITED

Third Appellant
KINGSGATE CLOTHING MANUFACTURERS
(PROPRIETARY) LIMITED

Fourth Appellant
MAJESTIC CLOTHING MANUFACTURERS
(PROPRIETARY) LIMITED

Fifth Appellant
STAR SHIRT & CLOTHING
(PROPRIETARY) LIMITED

Sixth Appellant
RICKEMP (PROPRIETARY) LIMITED

Seventh Appellant

and

THE GAP INC

First Respondent
GAP (APPAREL) INC

Second Respondent
GAP (ITM) INC

Third Respondent

Coram:
HARMS, STREICHER, BRAND, LEWIS AND PONNAN JJA
Heard:
15 AUGUST 2005
Delivered: 9  SEPTEMBER 2005

Subject:
Trade mark “Gap” ─ well-known trade marks ─ art 6bis Paris
Convention ─ principle of territoriality ─ non-use of trade
marks.

J U D G M E N T

HARMS JA:

INTRODUCTION
[1] This judgment concerns a number of registered South African trade
marks, all having the word GAP as a distinctive feature. The first is a word
mark THE GAP; there are two device marks consisting of GAP and THE
GAP (in lower case) written in a stylised form; and the word marks GAP
STORES and GAP KIDS. Salt of the Earth Creations (Pty) Ltd, the third
appellant, to whom I shall refer as ‘the proprietor’, is a local company and
the registered proprietor of these marks.  The respondents, a holding
company called The Gap Inc and two of its subsidiaries, are companies
registered in the state of Delaware in the United States of America.  (There is
no need in this judgment to distinguish between them and for the sake of
convenience I intend to refer to each and all of them as ‘the respondent’.)
[2] The respondent claims proprietorship of these marks on the ground
that GAP is a well-known trade mark that is entitled, without registration in
this country, to protection under s 35(3) of the Trade Marks Act 194 of 1993,
which incorporates the provisions of art 6bis of the Paris Convention into
our law.  Daniels J, in the court below, upheld this claim and granted an
interdict against the seven appellants, some of the members of a ‘group’ of
companies and enterprises that call themselves the AM Moolla Group (not to
be confused with the first appellant, AM Moolla Group Ltd). They were
enjoined from using a reproduction or imitation of the respondent’s GAP
marks in relation to clothing or retail clothing outlets).

[3] The respondent also applied, successfully, to have the proprietor’s
trade mark registrations expunged on the ground of non-use. Further
subsidiary grounds for expungement based on s 10(3) and s 9(1) read with s
10(12) were raised without success, and this gave rise to a cross-appeal but
only the s 10(3) case was persisted in during the hearing. In response to the
application for expungement the proprietor in turn lodged a counter-
application for an interdict for trade mark infringement, which was
dismissed in the light of the expungement. This dismissal of the counter-
application is another issue in the appeal. The present proceedings are with
the leave of the court of first instance.
[4] Previously some members of the Group sought to utilise the
provisions of the Counterfeit Goods Act 37 of 1997 to prevent the
respondent from transhipping clothing bearing a GAP trade mark through
South Africa but the attempt failed. The declaratory order issued in favour of
the respondent, which declared that the respondent did not transgress the
provisions of this Act by transhipment, was upheld in a case with the same
name as the instant case.1
[5] The story of Gap began in 1969 when the first Gap store, under the
name THE GAP, was opened in San Francisco. The novel concept was the
provision of a speciality retail outlet for clothing to exploit the ‘generation
gap’ symbolised by the increased popularity of casual clothing such as jeans.

1 AM Moolla Group Ltd & others v The Gap Inc & others [2005] 3 All SA 101 (SCA).

The business expanded and on 29 February 1972 a predecessor of the
respondent applied for the registration in the USA of THE GAP as a service
mark for ‘retail clothing store services’ in class 42 of the international Nice
classification. The year 1974 saw the beginning of the use of GAP in relation
to goods and an application for the registration of THE GAP (and design) as
a trade mark in class 25 (which relates to clothing). Other GAP trade mark
applications followed, both in class 25 and 42, beginning in 1977. As the
business expanded, trade mark applications were filed in other jurisdictions,
for instance, in the United Kingdom since 1983 and in Canada since 1985.
GAP stores were opened in the United Kingdom in 1987, and by 1991 there
were some 1000 stores in the USA, Canada and the United Kingdom. By
1992 the GAP trade mark had become one of the largest selling apparel
brands in the world measured by unit sales, and it is now the second largest.
At present hundreds of GAP trade marks are registered in countries
alphabetically and otherwise as far apart as Albania and Zimbabwe.
[6] Prior to the 1990s, the respondent showed little interest in the local
market. The explanation given was that because of the political climate in
this country, as an American company it was under a number of financial,
political and legislative constraints that precluded expansion into South
Africa. However, if one considers that in 1991 there were GAP stores in only
three countries, and since then the respondent’s attempts to enforce its rights

locally have been at less than a pedestrian pace, the explanation rings
somewhat hollow.
[7] Turning then to the Gap tale in this country: During 1971, at a time
when the respondent had 25 THE GAP retail outlets in six states in the USA,
and had not yet used a GAP trade mark in respect of clothing, one Hirsch
‘coined’ the trade mark GAP and began using it locally on clothing, and on
21 March 1973 he applied for the registration of the trade mark GAP in class
25 in relation to articles of clothing, including footwear (TM 73/1378). This
registration pre-dates any of the respondent’s trade marks in class 25, even in
the USA, and there is nothing on record to suggest that Hirsch had copied or
derived his inspiration from the respondent’s use of the GAP name on its
stores. During the 1970s, the proprietor, to whom Hirsch in the meantime
had assigned this mark, manufactured and sold substantial numbers of jeans
under the mark. A further GAP mark (‘the first device mark’ TM 80/5548),
which consists of the word mark in a stylised form, was registered during
1980.
[8] During 1983 the Group obtained control over the proprietor.
Capitalising on the fact that South Africa was subject to trade sanctions and
that art 6bis protection did not then exist, the proprietor changed its 1973
GAP trade mark to THE GAP, the corporate and trading name of the
respondent. In 1988, the proprietor applied for registration of a second THE
GAP (TM 88/4994) device mark, a blatant copy of respondent’s logo; it also

applied for GAP KIDS (TM 88/8783), an appropriation of respondents’
name for its children’s stores, first begun in 1985; and in 1989 it applied for
GAP STORES (TM 89/5087) in class 42. These applications were all
granted. Another application, in respect of GAP STAR, was filed in 1993 but
is pending because of opposition by the respondent.
THE PRINCIPLE OF TERRITORIALITY
[9] At the outset I wish to deal with the principle of territoriality
applicable to trade marks. Nicholas AJA explained the principle in Victoria’s
Secrets2 in these terms:
‘In the Moorgate judgment Mr Trollip3 stated that
“. . . 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) [of the Trade Marks Act 62 of 1963] are all premised by the subsection
to be within the RSA.”
It follows that the fact that a trade mark is registered and has been used, even
extensively used, by one person in a foreign country does not in itself constitute a bar to
its adoption and registration by some other person in South Africa.’
Nicholas AJA continued:

‘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. Thus in delivering the unanimous
judgment of the Full Court in P Lorillard and Co (supra at 356G-H),4 Boshoff J said:

2 Victoria’s Secrets Inc v Edgars Stores Ltd 1994 (3) SA 739 (A).
3 This is a reference to the ‘Honourable W G Trollip, a distinguished member of this Court between 1969
and 1982, in the written statement which was attached to the “Determination” under s 17(3) of the Act
which he made as hearing officer appointed under s 6(2A) of the Act in the contested matter of Moorgate
Tobacco Co Ltd v Philip Morris Incorporated, and which was delivered on 21 May 1986.’

“The basis of the challenge on this ground is that the objector was to the
knowledge of the applicant the proprietor of such a trade mark in the United States of
America and that the applicant improperly appropriated the mark. In the present state of
the law a trade mark is a purely territorial concept and there is, generally speaking,
nothing to prevent a  person from asserting a proprietary right in a trade mark in relation
to which no one else has in the same territory asserted a similar right.”’
Nicholas AJA also cited a number of judgments from foreign jurisdictions to
show that the principle is not peculiar to this country but is generally
accepted.5
[10] More recently, in the Barcelona.com case,6 a US Federal District
Court of Appeals dealt with the same underlying principle (per Niemeyer,
Circuit Judge):
‘The relevant substantive provision in this case is Article 6(3) of the Paris
Convention, which implements the doctrine of territoriality by providing that “[a] mark
duly registered in a country of the [Paris] Union shall be regarded as independent of
marks registered in the other countries of the Union, including the country of origin.” . . .
As one distinguished commentary explains,
“the Paris Convention creates nothing that even remotely resembles a ‘world
mark’ or an ‘international registration’. Rather, it recognizes the principle of the
territoriality of trademarks [in the sense that] a mark exists only under the laws of
each sovereign nation.”
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 29:25 (4th ed.
2002).

4 P Lorillard Co v Rembrandt Tobacco Co (Overseas) Ltd 1967 (4) SA 353 (T).
5 Re Impex Electrical Ltd's Trade Marks; Impex Electrical Ltd v Weinbaum (1927) 44 RPC 405 (Ch); The
Seven Up Company v OT Ltd (1947) 75 CLR 203; Aston v Harlee Manufacturing Co (1960) 103 CLR 391.
6 Barcelona.com v  Excelentisimo Ayuntamiento De Barcelona 189 F Supp 2d 367 (ED Va 2002).

It follows from incorporation of the doctrine of territoriality into United States law
through Section 44 of the Lanham Act that United States courts do not entertain actions
seeking to enforce trademark rights that exist only under foreign law. See Person’s Co.,
Ltd. v. Christman, 900 F.2d 1565, 1568-69 (Fed. Cir. 1990) (“The concept of territoriality
is basic to trademark law; trademark rights exist in each country solely according to that
country’s statutory scheme”).’
[11] Accordingly, the legality and propriety of Hirsch’s adoption of the
first two trade mark registrations is beyond dispute. Although one may query
the business morality of the adoption by slavish imitation of the respondent’s
trade marks after the Group’s take-over, it was also legally in order in the
absence of ‘something more’, ie, ‘factors that may have vitiated or tainted
his right or title to the proprietorship thereof’.7 The only factor raised in this
regard is the allegation that the respondents’ GAP trade marks are well
known in South Africa, which brings me to the next issue, namely the
protection of well-known trade marks.
PROTECTION OF WELL-KNOWN TRADE MARKS
[12] Special legislative protection is given to well-known trade marks.
There are two possible situations. The one relates to the protection of a well-
known registered mark against dilution as contained in s 34(1)(c) and which
was the subject of the recent Laugh It Off judgments of this court8 and the

7 Victoria’s Secrets Inc v Edgars Stores Ltd 1994 (3) SA 739 (A).
8 Laugh It Off Promotions CC v SA Breweries International (Finance) BV t/a Sabmark International 2005
(2) SA 46 (SCA), [2004] 4 All SA 151 (SCA).

Constitutional Court.9 The other, which is the one applicable in this case,
relates to the statutory protection based on art 6bis of the Paris Convention
for the Protection of Industrial Property (1883), which provides for the
protection of well-known trade marks that have not been registered (and if
registered, have not been used and therefore otherwise subject to
expungement)10  that belong to ‘qualified’ enterprises. Article 6bis was first
introduced with The Hague revision (1925) and its present form, which was
adopted during the Lisbon revision (1958), provides as follows:11
‘(1)
The countries of the Union undertake, ex officio if their legislation so
permits, or at the request of an interested party, to refuse or to cancel the registration, and
to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a
translation, liable to create confusion, of a mark considered by the competent authority of
the country of registration or use to be well known in that country as being already the
mark of a person entitled to the benefits of this Convention and used for identical or
similar goods. These provisions shall also apply when the essential part of the mark
constitutes a reproduction of any such well–known mark or an imitation liable to create
confusion therewith.
(2)
A period of at least five years from the date of registration shall be
allowed for requesting the cancellation of such a mark. The countries of the Union may
provide for a period within which the prohibition of use must be requested.
(3)
No time limit shall be fixed for requesting the cancellation or the

9 Laugh It Off Promotions CC v SA Breweries International (Finance) BV t/a Sabmark International 2005
(5) BCLR 743 (CC).
10 McDonald’s Corporation v Joburgers Drive-In Restaurant (Pty) Ltd & another 1997 (1) SA 1 (A).
11 For the history of the provision: Frederick W Mostert Famous and Well-known Marks 2ed ch 3.

prohibition of the use of marks registered or used in bad faith.’
[13] South Africa is not only party to the Paris Convention but also to the
GATT ‘Agreement on Trade-Related Aspects of Intellectual Property Rights’
(the so-called TRIPS agreement), which requires compliance with a number
of the provisions of the Paris Convention, including art 6bis (art 2.1).  In
addition, TRIPS ‘supplements’ art 6bis: whereas the art 6bis protection is
limited to trade marks relating to goods, TRIPS envisages the protection of
service marks (art 16.2); and while art 6bis prohibits the use of a well-known
mark on ‘identical or similar’ goods, TRIPS (art 16.3) requires wider
safeguards, namely, in relation –
‘to goods or services which are not similar to those in respect of which a trademark is
registered, provided that use of that trademark in relation to those goods or services would
indicate a connection between those goods or services and the owner of the registered
trademark and provided that the interests of the owner of the registered trademark are likely
to be damaged by such use.’
[14] In anticipation of the adoption of TRIPS, art 6bis was introduced as part
of our statutory law in terms of sections 35 and 36(2) of the current Act:
‘35.   Protection of well-known marks under Paris Convention.—
(1)  References in this Act to a trade mark which is entitled to protection under the
Paris Convention as a well-known trade mark, are to a mark which is well known in the
Republic as being the mark of—

(a)
a person who is a national of a convention country; or

(b)
a person who is domiciled in, or has a real and effective industrial or
commercial establishment in, a convention country,

whether or not such person carries on business, or has any goodwill, in the Republic.
(1A)  In determining for the purposes of subsection (1) whether a trade mark is
well-known in the Republic, due regard shall be given to the knowledge of the trade mark
in the relevant sector of the public, including knowledge which has been obtained as a
result of the promotion of the trade mark.12
(2)  A reference in this Act to the proprietor of such a mark shall be construed
accordingly.
(3)  The proprietor of a trade mark which is entitled to protection under the Paris
Convention as a well-known trade mark is entitled to restrain the use in the Republic of a
trade mark which constitutes, or the essential part of which constitutes, a reproduction,
imitation or translation of the well-known trade mark in relation to goods or services
which are identical or similar to the goods or services in respect of which the trade mark
is well known and where the use is likely to cause deception or confusion.
36.   Saving of vested rights.—(1)  . . .
(2)  Nothing in this Act shall allow the proprietor of a trade mark entitled to
protection of such trade mark under the Paris Convention as a well-known trade mark, to
interfere with or restrain the use by any person of a trade mark which constitutes, or the
essential parts of which constitute, a reproduction, imitation or translation of the well-
known trade mark in relation to goods or services in respect of which that person or a
predecessor in title of his has made continuous and bona fide use of the trade mark from a
date anterior to 31 August 1991 or the date on which the trade mark of the proprietor has
become entitled, in the Republic, to protection under the Paris Convention, whichever is
the later, or to object (on such use being proved) to the trade mark of that person being
registered in relation to those goods or services under section 14.’

12 Inserted in order to comply with another TRIPS requirement (art 16.2). It seems though that the
Legislature has not complied with its art 16.3 obligation.

[15] The protection conferred on well-known trade marks by provisions
such as these differs from ordinary statutory trade mark protection primarily
because they provide an exception to the principle of territoriality as
discussed above. In addition, they protect by way of trade mark legislation
also unregistered marks13 although similar protection is available at common
law under the lex Aquilia, more particularly, under the wrong of passing off,
which also protects the local reputation of a foreign undertaking, whether or
not it trades locally.14
[16] I now turn to consider whether the respondent has made out a case for
this kind of protection. Starting at the beginning, the introductory phrase of s
35(3), namely, ‘the proprietor of a trade mark which is entitled to protection
under the Paris Convention’ requires that, in order to be able to obtain the
protection provided for in s 35(3), the foreign owner has to be a ‘qualified’
person in terms of s 35(1). It is common cause that since the respondent has
a ‘real and effective industrial or commercial establishment in a convention
country’ (the USA is a member of the Paris Convention and has been so
declared by the President in terms of s 63 of the Act),15 this requirement has
been met. Another requirement is that the claimant has to be the ‘proprietor’

13 Wang Yan Fsng ‘The protection of the well-known trademark’ published on the internet:
www.chinaiprlaw.com/english/forum/forum21.htm.
14 Caterham Car Sales v Birkin Cars (Pty) Ltd 1998 (3) SA 938 (SCA). The same approach has been
adopted in a number of other jurisdictions: New Zealand: Dominion Rent-A-Car Ltd v  Budget Rent-A-Car
Systems [1987] 2 NZLR 395; Canada: Orkin Exterminating Co Inc v Pestco of Canada 80 CPR (2d) 153,
11 D.L.R. (4th) 8; India: Calvin Klein International v Apparel Syndicate [1995] RPC 515 (HC); Australia:
Conagra Inc v McCain Foods (Aust) Pty Ltd 23 IPR 193, [1992] 106 ALR 465.
15 Government Notice 1559 of 1996 reproduced in Webster and Page South African Law of Trade Marks
4ed App 7-3.

of the relevant well-known trade mark in its home territory, something not
disputed.
[17] The appellants submitted that the respondent’s claim based on s 35(3)
was flawed because the section grants protection to a well-known mark
against unregistered marks and not against marks registered locally. The
existing registrations per se, according to the argument, constitute an
absolute bar to s 35(3) relief. During argument we were presented with a
microscopic analysis of the term ‘trade mark’ as used by the Legislature in
different sections of the Act – does it refer to registered or unregistered
marks or both when used in s 35 and 36(2)? I do not intend to deal with the
argument in any detail because it flounders on a simple point. The object of
introducing these provisions onto our statute book was to comply with treaty
obligations under the Paris Convention and under TRIPS.16 Article 6bis
explicitly requires of countries to protect well-known marks against
registered and unregistered marks. There is no apparent reason why the
Legislature would have wished to provide otherwise. Since the term ‘trade
mark’ is ambiguous in that it can refer to marks both registered and
unregistered, the meaning consistent with the underlying legislative intention
has to be adopted. If one has to label this method of interpretation, it can
either be an application of the ‘soewereine’ rule of interpretation of Dr L C

16 McDonald’s Corporation v Joburgers Drive-In Restaurant (Pty) Ltd & another 1997 (1) SA 1 (A) 19E-
H.

Steyn,17 namely a determination of the intention of the Legislature, or the
‘purposive construction’ of Lord Diplock, or even Lord Steyn’s ‘context is
everything’.
[18] The question then is whether the respondent’s GAP marks are (or
were) well known in South Africa and, if so, since when. This raises a
number of interrelated questions which were identified during the course of
E M Grosskopf JA’s judgment in McDonald’s.18
(a) The first is the identification of the sector of the population ‘interested
in the goods or services to which the mark relates’.19 The respondent’s
case was that this ‘universe’ consists of individuals aged between 16
and 50 and living in an A+ income suburb, the reasoning being that
such persons were likely to have travelled overseas and would have
encountered the GAP marks abroad.
(b) Next is whether the mark is well known within the local jurisdiction as
a trade mark belonging to an enterprise with a base in another country
(although the knowledge does not have to include the fact that the
country is a convention country).20

17 Die Uitleg van Wette 5ed p 2.
18 See further in general Frederick W Mostert Famous and Well-known Marks 2ed.
19 At 20F. The ‘Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks
adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General
Assembly of the World Intellectual Property Organization (WIPO)’ (1999) recommended that

‘Relevant sectors of the public shall include, but shall not necessarily be limited to:
(i) actual and/or potential consumers of the type of goods and/or services to which the mark applies;
(ii) persons involved in channels of distribution of the type of goods and/or services to which the mark
applies;
(iii) business circles dealing with the type of goods and/or services to which the mark applies.’

20 At 15A-E.

(c) The last issue is the determination of whether those who have the
requisite knowledge represent a substantial number of the chosen
universe.21
[19] Reverting to issue (b), the UK hearing officer in the Swizzels Matlow
Limited trade mark application (the Polo trade mark),22 relying on
McDonald’s gave this useful exposition:
‘As I have indicated above the basic purpose behind Article 6bis would appear to
me to be to protect trade marks which are well-known in a country but are not used there.
So in the normal course of events there is a presumption that the party seeking protection
under Article 6bis has some form of base in a foreign country and in the normal course of
events the consumer would be aware of this owing to the absence of the use of the trade
mark in the country in which the claim is being [asserted]. Article 6bis states “well
known in that country as being already the mark of a person entitled to the benefits of this
Convention”. It seems to me that this must be read as requiring the trade mark to be well-
known as the trade mark of a person with a base in a country outside the United Kingdom
i.e. that the consumer must identify some overseas base with the trade mark.23 It would
however be silly to expect that the consumer should also know that the country is a
signatory to the Convention.’
[20] What the respondent primarily sought to establish was that GAP was a
well-known trade mark at the time the present proceedings were initiated in
the court below. To this end a market survey was conducted using as a basis
the said ‘universe’ of individuals. Of these, 48 per cent recognised the GAP

21 At 20H-21D.
22 Mr M Knight, delivered on 22 October 2002 in the UK Trade Mark Office. Available at
www.patent.gov.uk/tm/legal/decisions/.
23 Emphasis added.

logo and they overwhelmingly associated it with casual clothing. A quarter
of the universe thought that the retail outlets were local, 11 per cent thought
they were international and the rest did not know. As far as manufacturing
origin is concerned, 29 per cent believed GAP goods were manufactured
overseas (mostly in the USA), 12 per cent thought they were of a local origin
and 11 per cent did not know. (The percentages are approximations.)
[21] I have serious doubts that this evidence establishes any one of the
three points mentioned. However, since there is some evidence, as the court
below noted, which might suggest that the GAP mark was well known to
persons in the trade as that of a foreign concern since about 1988 (although
that was not the case the appellants were called to meet) I shall assume in
favour of the respondent that its GAP marks were well known in South
Africa as at 31 August 1991. That is the date referred to in s 36(2) of the Act
and was the date on which the bill that led to the current Act was published.
It is also the earliest date on which art 6bis protection became available.
Section 36(2) by implication distinguishes between two cases: (i) trade
marks that were already well known at that date are entitled to protection
subject to the recognition of certain prior rights; (ii) trade marks that become
well known after that date are entitled to protection as soon as they become
so known. There is little doubt that as at 1991 the proprietor as trade mark
owner was not making use of any of its trade marks on a ‘continuous and
bona fide’ manner as required by s 36(2) and accordingly was not entitled to

the recognition of existing rights by virtue of this provision. Although it may
have licensed other parties to use some of them, these licences were not
registered user agreements as was required by s 48 of the then existing Trade
Marks Act 62 of 1963, all matters to which I shall revert in another context.
[22] That does not dispose of the matter in the respondent’s favour. In
order to be entitled to the protection granted by s 35(3), the objectionable
trade mark has to constitute ‘a reproduction, imitation or translation of the
well-known trade mark’ of a ‘qualified’ party. In other words, unless the
‘foreign’ trade mark was well known at the time when the local enterprise
reproduced, imitated or translated it, the foreign trade mark is in the light of
the principle of territoriality not entitled to art 6bis protection.24
[23] This conclusion conforms to the judgment in Person’s.25  The facts
bear a striking resemblance to the facts in this case. In 1977, X first applied a
stylized logo bearing the name PERSON'S to clothing in his native Japan.
Two years later he formed a company, P, to market and distribute the
clothing items in retail stores located in Japan. In 1981, one C visited one of
P’s retail stores while on a trip to Japan and purchased clothing items
bearing the PERSON’S logo. He then developed designs for his own
PERSON’S brand sportswear line based on P’s products and in 1982 he
began producing clothing with the PERSON’S logo. All C’s goods bore

24 Cf Jeremy Philips Trade Mark Law A Practical Anatomy (2003) p 452.
25 Person’s Co Ltd  v Christman 900 F.2d 1565 (Fed. Cir. 1990). a judgment of the United States Court of
Appeals for the Federal Circuit, quoted with approval in Barcelona.com to which reference has been made
above. It should be borne in mind that the provisions of art 6bis apparently do not form part of US statutory
law and may not be directly enforced but are considered as part of unfair competition.

either the mark PERSON’S or a copy of P's globe logo and many of the
clothing styles were apparently copied directly from P’s designs. In 1983, C
filed an application for a US trademark registration of the PERSON’S mark.
Some seven months subsequent to C’s first sales P entered the US market. P
sought the expungement of C’s registration. The matter was first heard by a
board and the judgment next quoted was the decision on appeal.
[24] The court said this:
‘In a well reasoned decision the Board held for Christman on the grounds that
Person’s use of the mark in Japan could not be used to establish priority against a “good
faith” senior user in U.S. commerce. The Board found no evidence to suggest that the
“PERSON’S” mark had acquired any notoriety in this country at the time of its adoption
by Christman. Therefore, appellant had no reputation or goodwill upon which Christman
could have intended to trade, rendering the unfair competition provisions of the Paris
Convention inapplicable.’
‘In the present case, appellant Persons Co. relies on its use of the mark in Japan in
an attempt to support its claim for priority in the United States. Such foreign use has no
effect on U.S. commerce and cannot form the basis for a holding that appellant has
priority here. The concept of territoriality is basic to trademark law; trademark rights exist
in each country solely according to that country's statutory scheme. Christman was the
first to use the mark in United States commerce and the first to obtain a federal
registration thereon. Appellant has no basis upon which to claim priority and is the junior
user under these facts.’
‘In the case at bar, appellant Person’s Co., while first to adopt the mark, was not
the first user in the United States. Christman is the senior user, and we are aware of no

case where a senior user has been charged with bad faith. The concept of bad faith
adoption applies to remote junior users seeking concurrent use registrations; in such
cases, the likelihood of customer confusion in the remote area may be presumed from
proof of the junior user's knowledge. In the present case, when Christman initiated use of
the mark, Person’s Co. had not yet entered U.S. commerce. The Person’s Co. had no
goodwill in the United States and the “PERSON'S” mark had no reputation here.
Appellant’s argument ignores the territorial nature of trademark rights.’
‘As the Board noted below, Christman's prior use in U.S. commerce cannot be
discounted solely because he was aware of appellant’s use of the mark in Japan. While
adoption of a mark with knowledge of a prior actual user in U.S. commerce may give rise
to cognizable equities as between the parties, no such equities may be based upon
knowledge of a similar mark's existence or on a problematical intent to use such a similar
mark in the future. Knowledge of a foreign use does not preclude good faith adoption and
use in the United States. While there is some case law supporting a finding of bad faith
where (1) the foreign mark is famous here or (2) the use is a nominal one made solely to
block the prior foreign user's planned expansion into the United States, as the Board
correctly found, neither of these circumstances is present in this case.’
[25] To conclude: A local mark, validly appropriated, cannot lose its value
or protection simply because someone else’s reputation overtakes its
business.26 Although the marks in contention may at first blush appear to be
imitations or reproductions of the respondents’ marks, the crucial point is
that when any reproduction or imitation took place, it was not of a ‘well-
known’ mark but of a mark not well known within this country. As we have

26 Cf Caterham Car Sales v Birkin Cars (Pty) Ltd 1998 (3) SA 938 (SCA) para [22].

seen, there is and never has been anything wrong with the reproduction or
imitation of a mark that is not well known. Salt of the Earth was the first
proprietor of these marks in South Africa and became the proprietor at a
stage when the respondents’ marks were not yet well known.
NON-USE
[26] The next issue concerns the question of non-use.

‘A trader registers or acquires a trademark primarily not in order to prevent
others from using it but in order to use it himself (although exclusivity of use is of course
a necessary corollary).  Use by the proprietor is indeed a central and essential element of
ownership [since] rights may lapse or be unenforceable in the event of non-use.’27
As mentioned, the court below held that because of non-use of the trade
marks by the proprietor, the respondent was entitled to an order expunging
these registrations. Section 27(1)(b) of the current Act provides as follows:
‘27
Removal from register on ground of non-use –

(1) Subject to the provisions of section 70 (2), a registered trade mark may, on
application to the court, or, at the option of the applicant and subject to the provisions of
section 59 and in the prescribed manner, to the registrar by any interested person, be
removed from the register in respect of any of the goods or services in respect of which it
is registered, on the ground either-

(a)
. . .

(b)
that up to the date three months before the date of the application, a
continuous period of five years or longer has elapsed from the date of issue of the
certificate of registration during which the trade mark was registered and during which

27 The Advocate General, FG Jacobs, in Hölterhoff v Freiesleben (ECJ) (Case C-2/00). The judgments of
the European Court of Justice are available at www.curia.eu.int.

there was no bona fide use thereof in relation to those goods or services by any proprietor
thereof or any person permitted to use the trade mark as contemplated in section 38
during the period concerned; or

(c)
. . .’
[27] The application for expungement was launched on 13 August 1999.
Use of the marks during the preceding three months would not have saved
them but nothing turns on this. According to s 27(3),28 the onus to prove that
there was ‘relevant use’ of the trade mark rests upon the proprietor.
‘Relevant use’ in this context refers to bona fide use by the proprietor or
bona fide use by a third party ‘with the licence of the proprietor’ (the latter is
known as ‘permitted use’: s 38(1)).29 We are accordingly concerned with
bona fide use by the proprietor or a licensee during the period 13 May 1994
to13 May 1999. In order to qualify as bona fide use it is not necessary that
the use was continuous use (as required by s 36(2))30 although intermittent
use may be indicative of the fact that it was not bona fide. Use prior to 13
May 1994 and post 13 May 1999 is for this part of the investigation
irrelevant.
[28] The following matters have to be considered in this context: (a) Were
the marks used during this period? (b) Were they used by the proprietor? (c)

28 S 27(3) reads:
‘(3) In the case of an application in terms of paragraph (a) or (b) of subsection (1) the onus of
proving, if alleged, that there has been relevant use of the trade mark shall rest upon the proprietor thereof.’
29 S 38(1) and (2) provide:
‘(1) Where a registered trade mark is used by a person other than the proprietor thereof with the
licence of the proprietor, such use shall be deemed to be permitted use for the purposes of subsection (2).

(2) The permitted use of a trade mark referred to in subsection (1) shall be deemed to be use by the
proprietor and shall not be deemed to be use by a person other than the proprietor for the purposes of
section 27 or for any other purpose for which such use is material under this Act or at common law.’
30 Cf Jeremy Philips Trade Mark Law A Practical Anatomy (2003) p 440.

Was any other use permitted use? (d) Was the permitted use controlled? (e)
Was the use bona fide?
[29] It is convenient to deal with the first two questions at the same time.
The appellants concede that neither the first GAP device mark (TM 80/5548)
nor the GAP STORES mark (89/5087) was used during the relevant period
by any party. (The concession may have extended to GAP KIDS but that
does not matter in the scheme of things.) In addition, they accept in spite of
generalised allegations to the contrary by Dr Vahed, that the proprietor was
at all relevant stages a dormant company and did not use any of the marks.
Yet, it cannot be doubted that members of the Group did use the one or the
other of the remaining marks (73/1378 and 88/4994) during this period.
There is evidence to this effect not only from Dr Vahed but also, for
instance, from a wholesaler (Mr Shapiro) who purchased GAP clothing from
the Group and distributed it, all of which was not disputed. Which one of the
two marks was used though is unclear. As Daniels J correctly pointed out, Dr
Vahed
‘indiscriminately uses the plural and singular when referring to the various marks. . . . No
distinction is drawn between the marks. He goes so far as to refer to “the Gap and
related” marks, and elsewhere the expression “the various marks” was used.’
For instance the sales figures provided relate to sales ‘under the various GAP
trade marks’ although, as mentioned, it is conceded that the statement is
incorrect, at least as far as the first device mark is concerned. However, a

number of labels, which allegedly had been used, were produced and they
show use of the second device mark and of the word GAP.
[30] Even though the appellants’ evidence on this aspect of the case is
unsatisfactory, that is not fatal to their case. The general rule that a mark
must be used in the form in which it is registered31 does not necessarily
apply to associated marks. Section 31(1) provides:
‘When under the provisions of this Act use of a registered trade mark is required
to be proved for any purpose, the registrar or the court, as the case may be, may, if and so
far as he or it deems fit, accept proof of the use of an associated registered trade mark or
of the trade mark with additions or alterations not substantially affecting its identity, as
equivalent to proof of the use required to be proved.’
The provision applies because the original THE GAP word mark and the two
device marks (one consisting of the word GAP and the other of the words
THE GAP) are associated marks. In addition, according to the sub-section,
use of the word GAP on its own can be equivalent to use of THE GAP
because the difference between them cannot affect the registered mark’s
identity. Also, use of the name THE GAP in any stylised form amounts to
use of THE GAP (73/1378) because that registration is not restricted to those
words in any particular colour, style, manner or font.
[31] Having found that at least one of the associated marks was used by
members of the Group, and in the absence of any reason not to exercise the
discretion contained in s 31(1) in favour of the proprietor, the next question

31 Jeremy Philips Trade Mark Law A Practical Anatomy (2003) p 442.

to consider is whether such use was with its ‘licence’. Dr Vahed’s evidence
in this regard is not only vague to such an extent that it smacks of
evasiveness, but it is also contradictory. The problem lies in the loose
structure of the Group, which consists of companies and partnerships with an
overlap of shareholders and directors. The Group, it appears, tends to ignore
corporate identities and moved enterprises between companies. For instance,
at times the fourth appellant itself conducted business and at other times a
business under its name appeared to be an operating division of the second
appellant.32 In line with this approach, Dr Vahed said that when the Group
obtained control of the proprietor it (the Group) ‘acquired’ the GAP trade
marks. These were dealt with as Group property, any member using them
whenever it suited it. If then, in a 200 page affidavit, Dr Vahed dealt with the
issue of licensing in a single phrase, saying that the use by the members of
the Group since 1983 was ‘with the licence’ of the proprietor, one has to
conclude that this was no more than a mere allegation and did not amount to
factual evidence. Affidavits in application proceedings must do more than
make bald allegations; they must in addition provide the facts that support
the allegations. If the licence had been in terms of a written agreement, one
would have expected some particularity and perhaps even the production of
a copy; if oral, one would have expected some indication of between whom,

32 To add to the confusion, in a valuation report of the trade mark by the Group’s chartered accountant, the
statement is made that the Kingsgate name of Kingsgate Clothing (Pty) Ltd – a name different from that of
the fourth appellant, Kingsgate Clothing Manufacturers (Pty) Ltd – is ‘synonymous with the AM Moolla
Group’, whatever that may mean.

when and where; if tacit, an allegation to that effect with the facts that gave
rise to the tacit agreement would not have been out of place. In any event,
the grant of a licence to the Group is not only improbable but also
incompatible with the perception that existed within the Group that the trade
marks belonged to the Group.
[32] There is more. User agreements in the names of the first and second
appellants were registered on 21 January 1999 and, consequently, use by
either of them during the period 21 January to 13 May 1999 would have
amounted to permitted use. Although we were told that the Group had sales
of GAP clothing to the tune of R8m for the 1999 year, we were not informed
whether these sales were by the first and second appellants or by other
members of the Group. In fact, there is evidence of the existence of a
company in the Group with the name The Gap Clothing Manufacturers (Pty)
Ltd, which, according to advertisements, may have been the user of the trade
marks.
[33] The mystery deepens if regard is had to the first appellant’s annual
report for the year 1998. It starts off with an allegation that the GAP trade
marks are its registered brands but then, under the heading ‘Gap, Gapstar and
Gapkids’, the statement is made that
‘the Sterling division intends launching a high class range of men’s and ladies
casualwear/sportswear during the 1999 summer season and has concluded a User
Agreement with the registered owner to market these products under a separate division
called Gap Clothing Manufacturers.’

The problems with this statement are manifold. It was not confirmed under
oath. There is no evidence that the intention to produce the goods came to
fruition. According to the trade mark registry the user agreement was
between the first appellant and the proprietor whereas if this statement is to
be taken at face value it means that it was between the first appellant and one
of its divisions. To complicate matters, during 1999 a company called
Sterling Clothing (Pty) Ltd was joined as an applicant in proceedings
launched by the Group to interdict the infringement of the GAP trade marks,
presumably because it was a registered user (only proprietors and registered
users have legal standing to enforce registered trade mark rights), something
not explained in the papers.
[34] Similar problems are encountered with the unsubstantiated allegation
by Dr Vahed that at a time when the first appellant sought listing on the
Johannesburg Stock Exchange, during 1997, licence agreements were
entered into with both the first and second appellants. However, the pre-
listing statement made no reference to these agreements. On the assumption
that the pre-listing statement contained a frank disclosure of the state of the
first appellant’s business the omission was left unexplained.  But again, there
is no evidence that since the conclusion of the licence agreements either of
these licensees had used the GAP trade marks. Taking into account all these
facts I have to conclude that the appellant failed to discharge its onus.

[35] The respondent raised the issue of lack of quality control as an
independent factor under s 27(1). The submission was that unless a licence
agreement provides for quality control by or on behalf of the trade mark
owner, use by a licensee cannot qualify as permitted use. While the
appellants agreed with the legal proposition they submitted that the issue was
not properly raised by the respondent in the founding affidavit and that there
is in any event sufficient evidence on record to gainsay the allegation. I may
interpose to note that both parties have dealt with the matter in bald terms
and that if quality control were essential to prove permitted use, it would
have been for the trade mark proprietor to have raised the issue in discharge
of its overall onus.
[36] Daniels J accepted the correctness of the contention that some form of
quality control was required
‘since the licensor must have regard to the provisions of s 10(1) and (2)(a) of the Act
which require that whatever use is made of a mark it should still remain “capable of
distinguishing”. Use, which results in a loss of distinctiveness, cannot qualify as bona fide
use. It is for that reason that cogent evidence of quality control is required.’
[37] To assess the cogency of the contention it is necessary to have regard
to some basic principles and to the history of trade marks, much of which
was dealt with by the House of Lords in a judgment not brought to the
attention of Daniels J, namely, Scandecor.33 The judgment is relevant not
only for its persuasive reasoning but also because the history of our trade

33 Scandecor Developments AB v Scandecor Marketing AV & Others [2001] UKHL 21, [2002] FSR 122
(HL).

mark law mirrors the developments in the United Kingdom in most respects.
For instance, the repealed 1963 Act (s 48(2)) provided that use by a licensee
could only qualify as permitted use if it were in terms of a registered user
agreement.34 The same was the position under the 1938 UK Trade Marks
Act. And, as mentioned, the current s 27 (as did the UK Trade Marks Act of
1994) abolished this requirement by providing that use by any licensee is
permitted use.
[38] In principle, there does not appear to be any reason at present to
require quality control by or on behalf of the proprietor as a requirement for
permitted use. As Lord Nicholls explained in Scandecor:35
‘A trade mark is a badge of origin or source. The function of a trade mark is to
distinguish goods having one business source from goods having a different business
source. It must be “distinctive”. That is to say, it must be recognisable by a buyer of
goods to which it has been affixed as indicating that they are of the same origin as other
goods which bear the mark and whose quality has engendered goodwill: see GE Trade
Mark [1973] RPC 297, 325, per Lord Diplock.’
This exposition accords with the position in our law.36 Further, he said:37
‘Although the use of trade marks is founded on customers’ concern about the
quality of goods on offer, a trade mark does not itself amount to a representation of
quality. Rather it indicates that the goods are of the standard which the proprietor is
content to distribute “under his banner”: see Laddie J, in Glaxo Group v Dowelhurst Ltd
[2000] FSR 529, 540-541. . . . Thus, in relying on a trade mark consumers rely, not on

34 Sport Shoe (Pty) Ltd v Pep Stores SA (Pty) Ltd 1990 (1) SA 722 (A)
35 At para 16.
36  Beecham Group plc & another v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA).
37 At para 19.

any legal guarantee of quality, but on the proprietor of a trade mark having an economic
interest in maintaining the value of his mark. It is normally contrary to a proprietor’s self-
interest to allow the quality of the goods sold under his banner to decline.’
[39] Put differently, although in the ordinary course of events a trade mark
owner would wish to ensure the consistency of the quality of the goods or
services marketed under its mark, nothing prevents the owner from
providing under one mark goods or services of differing, inconsistent or poor
quality. The customer has in the event of the purchase of a substandard
product or the provision of substandard services no redress based on trade
mark principles. Market forces may eventually exact their toll. All a trade
mark does, in the words of Laddie J in Glaxo,38 is to identify the enterprise
that is responsible for the quality of the goods or services. Again Lord
Nicholls:39
‘This approach accords with business reality and customers' everyday
expectations. Customers realise there is always the prospect that, unbeknown to them, the
management of a business may change. To confine the use of a trade mark to the original
owner of a business would be to give the concept of a business origin or business source
an unrealistically narrow and impractical meaning. Of course, the new management, the
new owners, may not adhere to the same standards as the original owner. But the risk of
an unannounced change of standards is ever present, even when there has been no change
in management. An owner may always decide to change his quality standards. As already
noted, customers rely on it being in the owner’s self-interest to maintain the value of his

38 Glaxo Group v Dowelhurst Ltd [2000] FSR 529.
39 At para 22.

mark. The self-interest of the owner of a trade mark in maintaining its value applies as
much to a purchaser of the mark as it does to the original owner.’
[40] Although Scandecor was concerned with an exclusive licence, its
conclusion that the current UK Act countenances bare licensing, ie, licensing
without quality control, applies in my view to all licences under our current
Act. As Lord Nicholls explained:
‘Customers are well used to the practice of licensing of trade marks. When they
see goods to which a mark has been affixed, they understand that the goods have been
produced either by the owner of the mark or by someone else acting with his consent.’40
‘For their quality assurance customers rely on the self-interest of the owner. They
assume that if a licence has been granted the owner can be expected to have chosen a
suitable licensee and imposed suitable terms. They also assume that during the currency
of any licence the licensee, as well as the owner, is likely to have an interest in
maintaining the value of the brand name. Customers are not to be taken to rely on the
protection supposedly afforded by a legal requirement that the proprietor must always
retain and exercise an inherently imprecise degree of control over the licensee’s
activities.’41
[41] To revert to Daniels J’s ratio, namely that bare licences may lead to
loss of distinctiveness of a trade mark, the answer appears to me to be
factual: did the grant or exercise of a bare licence in the circumstances of a
particular case cause a loss of distinctiveness? If the answer is in the
affirmative, the appropriate remedy would be an application for the
expungement of the mark on that ground. In this case there was no evidence

40 At para 38.
41 At para 39.

of loss of distinctiveness because of the grant of bare licences (although
there is reason to believe that there was such a loss) and consequently the
objection of non-use could not have been upheld on this ground.
[42] That brings me to the last question relating to this issue: did such use
as there was amount to bona fide use? The concept of bona fide use has been
the subject of a number of judgments, also of this court,42 and the area need
not be traversed again. For present purposes it suffices to say that ‘bona fide
user’
‘means a user by the proprietor of his registered trade mark in connection with the
particular goods in respect of which it is registered with the object or intention primarily
of protecting, facilitating, and furthering his trading in such goods, and not for some
other, ulterior object.’43
This test is similar to that proposed in an opinion by the Advocate General in
the European Court of Justice in the Ansul case:44

‘When assessing whether use of the trade mark is genuine, regard must be had to
all the facts and circumstances relevant to establishing whether the commercial
exploitation of the mark is real, particularly whether such use is viewed as warranted in
the economic sector concerned to maintain or create a share in the market for the goods or
services protected by the mark, the nature of those goods or services, the characteristics
of the market and the scale and frequency of use of the mark.’

42 The authorities have been collected in Arjo Wiggins Ltd v Idem (Pty) Ltd & another 2002 (1) SA 591
(SCA) para 6.
43 Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk 1963 (2) SA 10 (T) 27G-H.
44 Ansul BV v Ajax Brandbeveiliging BV Case C-40/01, quoted by Jeremy Philips Trade Mark Law A
Practical Anatomy (2003) p 440.

[43] The essence of the respondent’s complaint was that the appellants
were prepared to assign the marks to the respondent at a price bordering on
the ridiculous and that they used implied political threats during the
negotiations. This, according to the submission, amounted to ‘trafficking’
and that the only reason for the extensive use by the Group of the marks was
to coerce the respondent into paying exorbitant sums for them.
[44] There is no merit in the submission. ‘Trafficking’ is an emotive term
which appeared in the repealed Act but is not in the current Act. The issue is
simply whether or not the Group’s use amounted to real commercial
exploitation of the marks in relation to goods or services in the trade mark
sense. Exploiting marks in order to increase their value to be able to sell
them at a higher price does not amount to an improper or mala fide
commercial exploitation. The point can be illustrated with reference to a
short dictum of Jacob J45 in a case where the registration of a trade mark was
opposed on the ground of bad faith:
‘I need say little about this allegation – it was based on a suggestion that somehow
a patent monopoly was being extended [by the registration of a trade mark]. That is miles
from bad faith.’
[45] To conclude on the subject of non-use: the objection was correctly
upheld on the ground that the proprietor had failed to prove use by itself or
permitted use during the period concerned.

45 Nestle SA v Unilever Plc [2002] EWHC 2709 (Ch).

THE CROSS-APPEAL
[46] The respondent also sought expungement of the registrations under s
10(3) of the Act. This provides that ‘a mark in relation to which the applicant
for registration has no bona fide claim to proprietorship,’ if registered, ‘shall,
subject to the provisions of sections 3 and 70, be liable to be removed from
the register’. The court below, as mentioned, expunged all the registrations
on the ground of non-use but dismissed this claim which sought the same
relief, albeit under another section of the Act. A cross-appeal may,
consequently, have been unnecessary because the respondent could have
defended the expungement by relying on s 10(3),46 but since little depends
on this procedural aspect I need not consider it any further.47
[47] The respondent’s argument under s 10(3) was straightforward. The
proprietor, since becoming part of the Group, has been a dormant company.
It did not manufacture or sell any clothing. All it did was to hold and register
trade marks. For instance, it applied for GAP STORES at the behest of OK
Bazaars (1929) Ltd and entered into a registered user agreement with it. The
other trade marks were not used or intended to be used by the proprietor.
Section 20(1) of the repealed 1963 Act provided that ‘any person claiming to
be the proprietor of a trade mark used or proposed to be used by him’ was
entitled to apply for registration. There were two exceptions. The first, which
did not apply, related to the case where someone intended to constitute a

46 Cirota & another v Law Society, Transvaal 1979 (1) SA 172 (A) 187-188.
47 As will appear later, the respondent is successful and is entitled to some or other favourable costs order.

body corporate and assign the mark to that body for its use. The second was
where the application for registration was accompanied by an application for
the registration of someone as a registered user. This exception could have
applied in the OK Bazaars case, but according to the trade mark registry the
user agreement was never filed, and the appellants never disclosed the date
of the agreement, nor did they allege that it had been filed simultaneously
with the application for registration.
[48] The respondent thus had a prima facie case for expungement on this
additional ground.48 The reason the court below dismissed the claim was
based on the introductory proviso to s 10 of the current Act, which made s
10(3) – and all of s 10 – subject to s 70. In so far as it is relevant, s 70 states
that
‘the validity of the original entry of a trade mark on the register of trade marks existing at
the commencement of this Act [1 May 1995] shall be determined in accordance with the
laws in force at the date of such entry.’
The appellants relied on s 42 of the 1963 Act,49 which provided that in all
proceedings
‘relating to a trade mark registered in part A of the register . . . the original registration of
the trade mark in part A of the register shall, after the expiration of seven years from the
date of that registration, be taken to be valid in all respects, unless –
(a)
that registration was obtained by fraud; or

48 Valentino Globe BV v Phillips & another 1998 (3) SA 775 (SCA).
49 Discussed in another context in Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A).

(b)
the trade mark offends against the provisions of either section sixteen or
section forty-one.’
(The exceptions are inapplicable.)
[49] We have to assume that these marks were registered in class A
because, in spite of no evidence to that effect in a record of 2500 pages, the
respondent did not suggest otherwise. For purposes of s 42, the date of
registration is, once a trade mark is registered, deemed to be the date of
application.50  That disposes of the present attack on the 1973 and 1980
marks. The position in relation to the 1988 and 1989 marks is, however,
factually different. When the 1993 Act came into force, they had not been on
the register for seven years, although, in one instance, the ‘prescription
period’ was missed by less than two months.
[50] The current Act does not retain the prescriptive period in relation to
‘old’ registrations nor does it provide for the completion of prescription after
its date. All that it provides is that the original registration of an old mark
may only be attacked under the provisions of the repealed Act, in other
words, the provisions of s 9 and 10 of the new Act do not apply. After seven
years under the old Act a registration became immune to any attack based on
its original registration. That could only have applied to marks that had been
on the register for seven years when the new Act came into operation. Since
this is not the situation the cross-appeal has to be upheld to the extent
indicated.

50 Mars Inc v Cadbury (Swaziland) Pty Ltd & another 2000 (4) SA 1010 (SCA) para [11]-[14].

CONCLUSION
[51] The outcome of the foregoing is that the appeal succeeds in relation to
the s 35(3) interdict but stands to be dismissed on the expungement claim
based on s 27(1)(b). Because of the expungement, the proprietor’s attempt to
interdict the respondent from infringing its registered trade marks falls away.
In addition, the cross-appeal succeeds. For the sake of clarity I intend to
redraft the order of the court below bearing in mind our conclusions. I am
conscious of the fact that the result may satisfy neither party because their
respective ability to prevent the other from using GAP marks in this country
hangs in the air and further litigation may be on the cards.
ORDER
[52] The following order is made:
1.
The appeal against para 3 of the order of the court (the s 35(3)
interdict) below is upheld with costs, including the costs of two
counsel.
2.
The appeal is otherwise dismissed.
3.
The cross-appeal is allowed with costs, including the costs of two
counsel.
4.
The order of the court below is replaced with the following order:
(a)
The following registered trade marks are expunged from the
register and the Registrar is ordered to effect the necessary

rectification: TM 73/1378, TM 80/5548, TM 88/4994, TM
88/8783 and TM 89/5087.
(b)
The respondents are ordered to pay the costs of the
application, including the costs of two counsel.
(c)
The counter-application is dismissed with costs.
(d)
The costs relating to the application to strike out are costs in
the application.

_____________________
L T C  HARMS
JUDGE OF APPEAL

AGREE:
STREICHER JA
BRAND JA
LEWIS JA
PONNAN JA