Truworths Ltd v Primark Holdings

Primark Holdings, an international fashion retailer originating in Ireland, registered the trade mark PRIMARK in South Africa in 1976 in class 25 for clothing and footwear, despite never operating a retail store in South Africa. Truworths Ltd, a long‑established South African fashion retailer, sought to register and use the mark PRIMARK in South Africa and applied for the expungement of Primark’s registered mark under ss 27(1)(a) and (b) of the Trade Marks Act 194 of 1993 on the grounds of non‑use and lack of bona fide intention to use. Primark opposed the application, arguing that its mark was protected from expungement under s 27(5) read with s 35(1) of the Act as a well‑known mark under the Paris Convention. The High Court dismissed Truworths’ application, and Truworths appealed to the Supreme Court of Appeal.

The appeal succeeded with costs. The order of the High Court was set aside and replaced with an order expunging the PRIMARK trade mark (registration no TM 1976/04952 in class 25) from the trade marks register, and directing the Registrar of Trade Marks to effect the necessary rectification. Primark was ordered to pay the costs of the application, including the costs of two counsel.

This case provides authoritative guidance on the interpretation of well‑known trade marks under s 35 of the Trade Marks Act and South Africa’s obligations under the Paris Convention. It clarifies how the relevant sector of the public must be identified and confirms that industry‑specific recognition alone will not necessarily suffice where the goods are aimed at the general consuming public. The judgment also reinforces the principle that long‑standing registration without bona fide use remains vulnerable to expungement.