Pepkor Retail (Proprietary) Limited v Truworths Limited

Truworths Limited was the proprietor of the registered trade mark "THE LOOK" registered in 1998 in classes 16, 25 and 35. Truworths and Pepkor Retail (trading as Ackermans) were competitors in the fashion retail industry. Truworths commenced discernible use of the mark only in 2009, using it on labels, swing tags, customer mailers, posters and websites. During 2009-2014, Truworths opened stores trading as "TRUWORTHS – THE LOOK" stores, where the TRUWORTHS name was significantly more prominent. In 2012, Ackermans embarked on a rebranding exercise using the phrase "THE LOOK FOR LESS". In December 2013, the parties reached an agreement whereby Ackermans undertook not to use THE LOOK on its own or as a store name or on labels/swing tags. In 2014, Truworths alleged that Ackermans' signage and advertisements breached this undertaking and infringed the trade mark. Truworths applied for an interdict in the Western Cape Division, and Ackermans filed a counter-application for removal of the mark from the register. The court a quo granted the interdict and refused the counter-application.

• Whether the registered trade mark 'THE LOOK' possessed inherent distinctiveness within the meaning of section 9 of the Trade Marks Act 194 of 1993
• Whether the trade mark had acquired distinctiveness through use prior to or at the date of application for removal from the register
• Whether the trade mark was liable to be removed from the register in terms of section 10(2)(a), (b) or (c) of the Trade Marks Act for lack of distinctiveness
• Whether a mark consisting of descriptive or generic words commonly used in the fashion industry could be registered as a trade mark

1. The appeal was upheld with costs, including the costs of two counsel. 2. The order of the court a quo was set aside and replaced with: (a) The main application dismissed with costs, including the costs of two counsel. (b) The counter-application granted with an order: (i) cancelling Truworths' trade mark registration number 1998/05493-5 in classes 16, 25 and 35; (ii) directing the Registrar of Trade Marks to cancel the registrations and remove them from the trade marks register; (iii) directing Truworths to pay the costs of the counter-application, including the costs of two counsel. (c) The application to strike out was granted with costs.

1. For a trade mark to be registrable and remain on the register, it must possess either inherent distinctiveness or acquired distinctiveness through prior use (section 9 of the Trade Marks Act). 2. A mark consisting of words that carry a universal ordinary meaning in an industry describing the kind, quality or characteristics of goods is not inherently distinctive and cannot serve as a badge of origin. 3. Words that are used generically or descriptively throughout an industry to designate characteristics of goods fall within section 10(2)(b) and (c) and are not registrable. 4. To establish acquired distinctiveness under the proviso to section 10(2), evidence must show that as a result of use, the mark is recognized by the average consumer as belonging to a particular person; mere evidence of use or turnover is insufficient. 5. The question of whether a mark possesses inherent or acquired distinctiveness is a question of fact determined with regard to all relevant circumstances including the nature of the mark, the relevant goods or services, the industry, and the perception of average consumers in that industry. 6. Where a mark is consistently used in conjunction with a well-known mark, it compounds the difficulty of establishing that the mark has acquired independent distinctiveness.

The court noted that Truworths' description of its stores as "THE LOOK stores" was "at best a misdescription and at worst disingenuous" given that the stores were actually branded as "TRUWORTHS – THE LOOK" with TRUWORTHS being much more prominent. The court observed that "it is probably more truthful for it to be described as a TRUWORTHS – THE LOOK store." The court also commented that had evidence of market surveys or public perception been available to Truworths, "it would no doubt have adduced it", suggesting the absence of such evidence was telling. The court noted that both deponents in Truworths' reply affidavits were suppliers to Truworths and "are not qualified to speak for the average consumer in the industry", and that their views were expressed in "tentative terms", which may explain why their evidence carried little weight.

This case is significant in South African trade mark law as it clarifies the requirements for inherent and acquired distinctiveness under sections 9 and 10 of the Trade Marks Act 194 of 1993. It establishes that generic or descriptive terms commonly used in an industry cannot be monopolized by a single trader, even with registration. The judgment emphasizes that widespread use of a phrase within an industry renders it incapable of serving as a badge of origin for a particular trader. The case also clarifies the evidentiary burden on a party seeking to establish acquired distinctiveness through use, requiring more than mere evidence of turnover or use, and ideally requiring market surveys or independent evidence of public perception. It reinforces the principle that trade marks must be capable of distinguishing goods or services of one person from another, fulfilling their fundamental function as a "badge of origin". The decision protects fair competition by preventing the registration of marks that would grant one party an unfair monopoly over common descriptive language in an industry.