New Balance Athletic Shoe Inc v Dajee NO and Others

New Balance Athletic Shoe Inc, a United States corporation, was the registered proprietor in South Africa of the trade marks P-F and P-F FLYERS in class 25 for footwear, acquired in 2001. Abdullah Mohamed Dajee (later substituted by the executors of his estate) was the registered proprietor of the South African trade mark POSTURE FOUNDATION – PF, also in class 25. A dispute arose when New Balance South Africa intended to market footwear bearing the P-F and P-F FLYERS marks in association with POSTURE FOUNDATION. Dajee alleged infringement and applied for removal of New Balance Inc’s marks on the ground of non-use under s 27(1)(b) of the Trade Marks Act 194 of 1993. New Balance Inc opposed and counter-applied for removal of Dajee’s mark on the grounds that Dajee was not a bona fide proprietor (s 10(3)) and that the mark was used in a manner likely to cause deception or confusion (s 10(13)). The registrar upheld Dajee’s non-use application and dismissed New Balance Inc’s counter-application. Appeals to the North Gauteng High Court failed, and New Balance Inc further appealed to the Supreme Court of Appeal.

Both appeals were dismissed with costs, including the costs of two counsel. The removal of New Balance Inc’s trade marks from the register was confirmed, and the dismissal of the application to remove Mr Dajee’s trade mark was upheld.

The case reaffirms the strict evidentiary burden on trade mark proprietors to prove bona fide use in South Africa to avoid removal for non-use. It confirms the continued application of the territorial principle in South African trade mark law and rejects arguments for a trans-territorial approach based on globalisation. The judgment also clarifies that courts will require clear, specific, and corroborated evidence of use within the statutory period.