Grupo Bimbo S.A.B. v Takis Biltong

South Africa

14.12.2023

Intellectual Property Rights

A mark can be opposed or cancelled, if it is identical to or similar to a trade mark which is already registered

The applicant, a Mexican company which traded in many countries including South Africa, was the proprietor of the impugned mark. It was registered in South Africa on 6 June 2012. The respondent was a South African company which sold biltong and other snack products in South Africa. The respondent applied to the high court, in terms of Section 24 of the Trade Marks Act, 1993 (the Trade Marks Act), to have the impugned mark expunged. The court of first instance dismissed the application.

The respondent appealed against that decision to the full court. On appeal, the majority set aside the order of the court of first instance and replaced it with one cancelling the impugned mark. The majority, accordingly, held that the requirements of Sections 10(12), 10(14), 10(16), and 10(17) of the Trade Marks Act had been satisfied. Aggrieved by that outcome, the appellant petitioned this Court for leave to appeal which was dismissed.

For the applicant to succeed in the application for special leave to appeal against the order of the majority, it had to show that there were special circumstances in existence. And in order to do the applicant had to show that: (a) the marks were not similar and that there was no likelihood of deception and confusion; (b) the goods were not similar; (c) the impugned mark was unlikely to take advantage of or be detrimental to the respondent’s registered mark; and (d) the respondent did not have prior existing rights in class 30 goods. The applicant failed to establish special circumstances and that factor alone was sufficient reason to dismiss the application for special leave to appeal.

Section 10(17) of the Trade Marks Act provides that, a mark can be opposed or cancelled if it is identical to or similar to a trade mark which is already registered and which is well-known in the Republic, if the use of the mark sought to be registered 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 deception or confusion.

The majority concluded correctly that the applicant’s impugned mark was an entry wrongly made in, and wrongly remaining on, the trade mark register and it thus fell to be cancelled in terms of Sections 10(12), 10(14) and 10(17) of the Trade Marks Act. The proposed appeal had no reasonable prospects of success. The applicant had failed to establish special circumstances. Application dismissed.

Tags : Leave to appeal Special circumstances Existence

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