Morris Material Handling Ltd v Morris Material Handling SA (Pty) Ltd

The appellant was the registered proprietor of the trade mark MORRIS in classes 7 and 11, originally registered in 1936 and later assigned to it. The respondent, a South African crane manufacturer trading under the name Morris Material Handling SA (Pty) Ltd, sought to register the same mark but was blocked by the appellant’s prior registration. The respondent applied to have the appellant’s mark expunged from the register under s 27(1)(b) of the Trade Marks Act 194 of 1993 on the basis of non-use for a continuous period exceeding five years. Evidence showed that parts bearing the MORRIS mark were distributed in South Africa by Konecranes SA during the relevant period, but it was unclear whether such use was by the appellant as proprietor, or by other entities within the Konecranes group. The High Court ordered expungement, and the appellant appealed to the Supreme Court of Appeal.

The appeal was dismissed with costs, including the costs of two counsel, and the order expunging the trade mark from the register was confirmed.

The case reaffirms the strict evidentiary burden on trade mark proprietors to prove bona fide use by themselves when faced with expungement proceedings for non-use. It underscores that use by related companies or within a corporate group will not suffice without clear proof of proprietary use or properly established licensing arrangements. The judgment strengthens South African jurisprudence on non-use expungement under the Trade Marks Act.