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

The respondents, part of the GAP group of companies, owned registered GAP trade marks in numerous countries. GAP-branded clothing was lawfully manufactured in countries where GAP held trade mark registrations and was destined for markets where it likewise held registrations. Because some source countries were landlocked or island states, the goods had to be transported through South Africa or transhipped via South African ports. The appellants, relying on their own South African trade mark registrations in class 25 and on the Counterfeit Goods Act 37 of 1997, attempted or threatened to have these goods impounded while in transit through South Africa. The respondents approached the Durban High Court for declaratory relief that such transhipment did not contravene the Counterfeit Goods Act or the Trade Marks Act, as the goods were not for sale in South Africa and were lawfully marked abroad. The High Court granted the order, and the appellants appealed to the Supreme Court of Appeal.

The appeal was dismissed with costs, including the costs of two counsel, and the High Court’s declaratory order in favour of the respondents was confirmed.

The case is a leading South African authority on the interpretation of the Counterfeit Goods Act, particularly regarding goods in transit. It clarifies that the Act does not apply to the transhipment through South Africa of genuine goods destined for foreign markets, thereby protecting legitimate international trade and limiting the extraterritorial reach of South African intellectual property enforcement.