Turbek Trading CC v A & D Spitz Limited and Another

Turbek Trading CC was the registered proprietor of two trade marks consisting of the initials "KG": one in class 25 (clothing, footwear and headgear) and a service mark in class 35. The applications were filed on 7 March 2000 and registered on 29 February 2005 after amendment from "KG Italia" to "KG". A & D Spitz Ltd, the owner of the well-known "Kurt Geiger" trade mark registered since 1990 in class 25, claimed that it had prior common-law rights in the mark "KG" through alleged use and reputation predating Turbek’s applications. Spitz sought expungement of Turbek’s registrations under s 10(16) of the Trade Marks Act 194 of 1993, and also sought to interdict Turbek on the grounds of trade mark infringement and passing-off. The High Court upheld Spitz’s claims, and Turbek appealed to the Supreme Court of Appeal.

The appeal was upheld with costs. The order of the High Court was set aside and replaced with an order dismissing Spitz’s application with costs.

The case clarifies South African trade mark law on the relationship between registered trade marks and passing-off, confirming that a registered mark cannot be trumped by alleged common-law rights without proof of grounds for revocation. It also provides authoritative guidance on prior rights under s 10(16), the evidentiary burden to establish common-law reputation, and rejects acquiescence as an independent substantive defence in trade mark disputes.