Roodezandt Ko-operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd and Another

Roodezandt Ko-operatiewe Wynmakery Ltd was the proprietor of the trademark "Robertson Hills", registered in class 33 for alcoholic beverages (except beer), with a deemed registration date of 25 February 2008. Robertson Winery (Pty) Ltd, an established winery operating since 1941, owned several earlier registered trademarks in class 33 incorporating the word "Robertson", including "Robertson Winery", "Robertson Vineyards" and "Robertsoner". Robertson Winery applied to the North Gauteng High Court for rectification of the trademarks register under s 24 of the Trademarks Act 194 of 1993, seeking removal of "Robertson Hills" on the basis that it was confusingly similar to its existing marks. The High Court granted the removal. Roodezandt appealed to the Supreme Court of Appeal.

The appeal was dismissed with costs. The High Court’s order removing the trademark "Robertson Hills" from the register was confirmed, but amended to provide that the removal takes effect from 19 January 2012, being the date of the application for removal.

The case is significant for clarifying how likelihood of confusion is assessed where competing wine trademarks share a geographical name, and for confirming that such names can acquire distinctiveness through long and exclusive use. It also provides important guidance on the retrospective effect of trademark removal under s 24, aligning trademark law with administrative-law principles on the validity of decisions until set aside.