Pepkor Retail (Proprietary) Limited v Truworths Limited

Truworths Limited, a fashion retailer, was the proprietor of the registered trade mark THE LOOK, registered in 1998 in classes 16, 25 and 35 under the Trade Marks Act 194 of 1993. Pepkor Retail (Pty) Ltd, trading as Ackermans, a competing value fashion retailer, used the phrase THE LOOK FOR LESS in its promotional material and store signage from 2012 following a rebranding exercise. Truworths sought an interdict in the Western Cape High Court to restrain Ackermans from using the phrase, alleging trade mark infringement, breach of an undertaking, and passing off. Ackermans opposed and filed a counter-application seeking removal of THE LOOK from the trade mark register on the basis that it lacked inherent and acquired distinctiveness and was descriptive and customary in the trade. The High Court granted the interdict and dismissed the counter-application. Ackermans appealed to the Supreme Court of Appeal.

The appeal was upheld with costs. The High Court’s order was set aside. Truworths’ main application for an interdict was dismissed, and Ackermans’ counter-application was granted. Trade mark registration number 1998/05493-5 in classes 16, 25 and 35 was cancelled and ordered to be removed from the trade marks register. Truworths was ordered to pay costs, including the costs of two counsel.

This case is a leading South African authority on the distinctiveness requirement for trade mark registration, particularly in the context of descriptive words in the fashion retail industry. It underscores that common industry terms cannot be monopolised through trade mark registration and clarifies that extensive use and turnover alone do not establish acquired distinctiveness without evidence of consumer perception.