Etraction (Pty) Ltd was the registered proprietor of the trade mark INFINITY in class 12 for vehicle components and accessories, including wheels, tyres, and rims, with effect from 15 April 2008. Etraction had used the mark INFINITY since about 1995, but only in relation to rims, not tyres. Tyrecor (Pty) Ltd, a competitor, imported and sold tyres in South Africa under the name Infinity from at least early 2009. Before Tyrecor’s involvement, Falck Trading (Pty) Ltd, a related entity within the Tyrecor group, had imported, marketed, and sold Infinity-branded tyres in South Africa since 2006, with significant sales, advertising, and exhibition presence. Etraction sought to interdict Tyrecor for trade mark infringement. Tyrecor opposed the application and brought a counter-application seeking expungement of the word ‘tires’ from Etraction’s registered trade mark on the basis of non-use and lack of bona fide intention to use.
The appeal was dismissed with costs, save that the order relating to the counter-application was amended. The Registrar of Trade Marks was directed, in terms of section 24(1) of the Trade Marks Act, to expunge the word ‘tires’ from Etraction’s trade mark registration and to amend the specification to read: ‘Vehicle components and accessories: wheels and rims, but not including tyres’.
This case is significant for clarifying the scope and purpose of the defence of prior bona fide use under section 36(1) of the Trade Marks Act. It confirms that the defence protects common-law rights arising from factual use and goodwill, not ownership of an unregistered mark. The judgment also underscores that trade mark registrations may be partially expunged where they are obtained without a bona fide intention to use the mark, particularly where registration is aimed at damaging an existing user rather than trading oneself.