Stephen Marshall and Safetop (Proprietary) Limited v Atupele Investments (Proprietary) Limited T/A Workboss Hardware

The first applicant, Safe Top (Pvt) Ltd, registered an industrial design for a sealing structure (cap and washer) in 2017. The second applicant registered 6 trademarks relating to the "Safe Top" logo and word marks between 2016 and 2020, with the main trademark registered on 12 October 2016. The second applicant had been manufacturing and selling products under the Safe Top brand since 2012 through a distributor. The respondent, trading as WORKBOSS Hardware, began importing roof seals from China in November 2016 that bore the inscription "SAFE TOP" and used marks including "WORKBOSS Safe Seal Top". The applicants became aware in February 2017 that the respondent was selling roof seals identical or substantially similar to theirs, using the words "SAFE TOP" and "Safe Seal Top" on products and packaging. The respondent claimed it had prior use rights and that "SAFE TOP" was a generic, descriptive term that could not be monopolized.

• Whether the respondent infringed the first applicant's registered industrial design
• Whether the respondent infringed the second applicant's registered trademarks in terms of section 8(1) of the Trade Marks Act
• Whether the Safe Top mark was valid or merely descriptive and therefore unprotectable
• Whether the respondent had prior use rights under section 10 of the Trade Marks Act that would entitle it to continue using the mark
• Whether the respondent passed off its products as those of the applicants
• Whether interdicts remained an appropriate remedy given the respondent's undertakings
• Whether the respondent should be ordered to render an account of profits under section 9A(2) of the Trade Marks Act

1. Respondent directed to render and deliver within 30 days an account under oath of all income and profits derived from sale of infringing articles using the trademarks "Safe Top", "Safe Seal Top", "Roof Seal Nails" under WORK BOSS and Pandor Hardware from 1 November 2016 to date of account, supported by vouchers. 2. Respondent directed to render and deliver within 30 days an account under oath of all purchases of infringing articles from third party manufacturers and suppliers, supported by invoices and documents. 3. Respondent to pay applicants' costs on the ordinary scale. (Additional orders restraining infringement of industrial design and trademarks were granted earlier by consent.)

1. A trademark is not descriptive merely because one component word refers to a characteristic; if the mark as a whole does not describe the essential features of the product, it is capable of protection. 2. Prior use rights under section 10 of the Trade Marks Act require that the user of the unregistered mark commenced continuous and bona fide use from a date anterior to the registration (or use, whichever is earlier) of the registered trademark. Use that commences after registration does not attract prior use protection. 3. Trademark infringement under section 8(1) requires proof of five elements: (a) unauthorized use, (b) of a trademark, (c) in relation to products or services, (d) in respect of which the trademark is registered, (e) that is identical or so nearly resembling as to be likely to deceive or cause confusion. 4. When comparing marks for confusing similarity, the court must consider the dominant features of the marks, the overall visual, aural and conceptual impression, and the likely impact on a notional customer of average intelligence with imperfect recollection. 5. In passing off claims, goodwill and reputation must be affirmatively proved through evidence such as sales figures, advertising expenditure, distribution scale, and market recognition. Mere assertions of trading history are insufficient. The relevant date for assessing goodwill is when the defendant entered the market. 6. An account of profits under section 9A(2) of the Trade Marks Act is available as a remedy for trademark infringement regardless of whether passing off is established.

The court noted that while South African courts have refused to recognize the remedy of accounting for profits on the basis that it is merely an English procedural remedy not provided for in the rules, the Zimbabwean Trade Marks Act expressly provides for this remedy in section 9A(2), distinguishing the position in Zimbabwe. The court also observed that prior use vests certain rights in a user without formalities of registration, and that a registered proprietor has no better rights than a person who has had continuous and bona fide prior use, though this principle did not assist the respondent on the facts. The court remarked that costs on an attorney-client scale should be imposed sparingly and only in deserving cases where conduct amounts to abuse of process, noting that while the respondent was a deliberate infringer, its defense was not entirely unreasonable and it eventually cooperated by entering into a consent order disposing of most issues.

This case provides important guidance on trademark law in Zimbabwe/South Africa, particularly: (1) the test for whether a mark is descriptive versus protectable; (2) the application of prior use rights under section 10 of the Trade Marks Act, clarifying that prior use must predate both registration and use by the registered proprietor, and must be continuous and bona fide; (3) the comprehensive application of the Plascon Evans test for trademark infringement, examining similarity of marks, products, and likelihood of confusion; (4) the evidentiary burden for proving goodwill and reputation in passing off claims, requiring concrete evidence beyond mere assertions of trading history; and (5) the availability of the remedy of accounting for profits under section 9A(2) for trademark infringement, even where passing off is not established. The case demonstrates the court's willingness to resolve factual disputes in application proceedings using a robust approach where one party's version is clearly correct on the papers.