The Gap Inc v Salt of the Earth Creations (Pty) Ltd and Others

The Gap Inc, a United States corporation, was the registered proprietor of the trade mark GAP in class 3 (personal care products) in South Africa. The first to third respondents, South African companies, applied in the North Gauteng High Court for the expungement of this trade mark from the Register on the ground of non-use in terms of section 27(1) of the Trade Marks Act 194 of 1993. The High Court (Southwood J) ordered the expungement, finding that The Gap Inc had not shown bona fide use of the mark during the relevant five-year period (4 December 2002 to 4 December 2007). The Gap Inc appealed to the Supreme Court of Appeal. Although the parties had settled their disputes and the appeal was unopposed, the appellant pursued the appeal because the expungement order affected a public register and was a judgment in rem.

The appeal was upheld. The order of the North Gauteng High Court was set aside and substituted with an order dismissing the application for expungement. No order as to costs was made in either court.

This case is significant for South African trade mark law as it clarifies the meaning of 'bona fide use' under section 27 of the Trade Marks Act. It confirms that preparatory commercial activities such as negotiations, marketing efforts, and placing of orders aimed at the South African market can constitute use, even if goods have not yet physically entered the country. The judgment reinforces the low threshold for use required to avoid expungement and aligns South African law with European jurisprudence on genuine use.