A M Moolla Group Limited and Others v The Gap Inc and Others

The case concerned competing claims to the trade mark GAP in South Africa. Salt of the Earth Creations (Pty) Ltd, part of the AM Moolla Group, was the registered proprietor of several South African trade marks incorporating the word GAP, some dating back to the early 1970s. The respondents, The Gap Inc and its subsidiaries, were US-based companies that owned and used the GAP mark extensively overseas and claimed that GAP was a well-known trade mark entitled to protection in South Africa under s 35(3) of the Trade Marks Act 194 of 1993, which incorporates article 6bis of the Paris Convention. The respondents sought an interdict restraining use of GAP by the appellants and expungement of the appellants’ registered marks on grounds of non-use. The court a quo granted the interdict and ordered expungement. The appellants appealed to the Supreme Court of Appeal.

The appeal was upheld, the interdict based on s 35(3) was set aside, and the respondents were not entitled to restrain the appellants’ use of the GAP marks on the basis of well-known trade mark protection.

The case is a leading South African authority on the interaction between the principle of territoriality and the protection of well-known trade marks under article 6bis of the Paris Convention. It clarifies that well-known mark protection does not automatically trump earlier, bona fide local adoption and registration of a trade mark, and that the foreign mark must have been well known in South Africa at the time of the alleged imitation.