Articles

trademark infringement judgments

by Nicci - Posted 06 January 2010

2 judgments relating to trademark infringement were handed down in the Supreme Court of Appeal in November 2009.  

Turbek Trading CC v A & D Spitz Limited & Another (565/08)(2009)ZASCA

A & D Spitz had successfully applied for the expungement of Turbek Trading's registered trademark "KG" based on its claim that it had prior rights to the trademark.  Turbek successfully appealed the decision and below is a brief summary of the case.

Turbek, which deals exclusively in footwear, is the registered owner of 2 trademarks, both consisting of the initials "KG", which were applied for in 2000.  The trademark is the initials of the owner, Kenneth Gordon.  A & D Spitz, which deals in footwear and clothing, have been using the name "Kurt Geiger" as a trademark, which has been registered since 1990.  They applied for the expungement of the "KG" mark and an interdict against Turbek from using the mark "KG" and relied on trademark infringement and passing-off in their application.    They alleged that they had been using the mark "KG" for a number of years prior to Turbek's registration.

Essentially, the Court had to decide if A & D Spitz had, on 7 March 2000 (the date of Turbek's application), an existing right in the trademark "KG"?   Did the mark "KG" form part of Spitz's goodwill at that date?  Spitz had to prove that it had "originated, acquired or adopted" the mark and had used it to the extent that it had gained the reputation that the goods to which it was used belonged to Spitz.

Unfortunately, Spitz could not prove this and all it could show was that it had advertised footwear before 2000 under a trademark consisting of the letters KG together with the name Kurt Geiger.   Spitz further admitted that it does not brand its footwear with the "KG" mark - but that the purblic "always" referred to the Kurt Geiger brand as "KG".   This was not enough to convince the Court that it had used the mark enough to justify that it had a right to it.

Century City Apartments Property Services CC & Another v Century City Property Owners Association (57/09)(2009)ZASCA

The Century City HOA had successfully applied for an interdict against Century City Apartments from using the name "Century City" and ordered a name change as well as the transfer of its domain name registration to the HOA, based on infringement of its trademark.   Century City Apartments successfully appealed the decision and below is a brief summary of the case.

The HOA is the registered owner of the trademark "Century City".   Century City Apartments use the name as its brand and business name.   The argument focused on the infringement of their trademark in that the use of the words "Century City" by Century City Apartments would lead to deception or confusion in the minds of the public.

Century City Apartments in turn raised a counter-claim for the expungement of the HOA's trademark registration, on the basis that the mark refers to a geographical location, which is not capable of being registered.  Century City has effectively become a suburb of Cape Town.  Furthermore, the HOA functions similarly to that of a body corporate in a sectional title scheme - it does not sell goods and services to the general public at all.  

The Court found that the use of the name Century City was an infringement, but the trademark itself was no longer capable of being registered, so therefore no infringement had taken place.   The Court revoked the HOA's registration of certain of its trademarks using the words "Century City".