Bata Limited v Face Fashions CC and Another

The appellant, Bata Limited, a Canadian company, was the registered proprietor of several South African trade marks incorporating the word “Power”, registered mainly in respect of footwear and some in respect of clothing. Bata licensed Futura Footwear Ltd to use these marks in South Africa. The first respondent, Face Fashions CC, together with an associated entity, Power House CC, manufactured and sold clothing under the mark “Power House” or “Powerhouse”, often accompanied by a dog device, and had done so since 1987. Bata brought application proceedings seeking to restrain the respondents from using “Power”, “Power House” or “Powerhouse” on clothing, alleging trade mark infringement under sections 34(1)(a) and 34(1)(c) of the Trade Marks Act 1993, as well as passing off. The High Court dismissed the application. Bata appealed to the Supreme Court of Appeal, abandoning the passing-off claim and relying only on statutory trade mark infringement.

The appeal was dismissed with costs.

The case is an important authority on the interpretation and application of sections 34(1)(a) and 34(1)(c) of the Trade Marks Act 1993. It clarifies that the mere presence of a common word, particularly an ordinary descriptive word, does not automatically give rise to trade mark infringement. The judgment also provides early and influential guidance on the scope of anti-dilution protection under section 34(1)(c), cautioning against an overly broad interpretation that would unduly restrict freedom of trade.