Truworths Ltd v Primark Holdings

Primark Holdings, a fashion retailer based in Ireland with stores in the UK and Europe but no stores in South Africa, registered the trade mark PRIMARK in South Africa in 1976 in class 25 for clothing, boots, shoes and slippers. Truworths Ltd, a well-known South African fashion retailer, wished to register and use the PRIMARK mark. Truworths brought an application to expunge Primark's mark from the register under ss 27(1)(a) and (b) of the Trade Marks Act 194 of 1993, on grounds that there was never a bona fide intention to use the mark and that there had been no bona fide use for the statutorily defined period. Primark defended the application primarily on the basis that its mark was a well-known mark entitled to protection under the Paris Convention, and thus protected from expungement by s 27(5) of the Act. The high court (Monama J) dismissed the application. Truworths appealed with leave.

• Whether the PRIMARK mark is a well-known mark in South Africa within the meaning of s 35(1) of the Trade Marks Act 194 of 1993, thereby attracting protection under the Paris Convention and immunity from expungement under s 27(5)
• What constitutes the 'relevant sector of the public' for determining whether a mark is well known in South Africa
• Whether there had been bona fide use of the PRIMARK mark in South Africa during the relevant period
• Whether knowledge of a mark among persons in the retail trade (as opposed to consumers) constitutes knowledge in a 'relevant sector of the public' for purposes of well-known mark protection

The appeal succeeded with costs, including costs of two counsel. The high court order was set aside and replaced with an order: (a) expunging Primark's registered trademark PRIMARK (registration no TM 1976/04952) in class 25 from the register, with the Registrar ordered to effect the necessary rectification; (b) ordering Primark to pay the costs of the application for removal, including costs of two counsel.

For a trade mark to qualify as a well-known mark entitled to protection under s 35(1) of the Trade Marks Act and immunity from expungement under s 27(5), it must be well-known among a relevant sector of the South African public. Relevant sectors are constituted by those who are potentially likely to be attracted by the mark's reputation to do business with the proprietor of the mark, whether as consumers, agents, importers, channels of supply, retailers or otherwise. Knowledge of a mark among persons who know it for purposes unrelated to doing business with the mark owner - such as to study or emulate the business model - does not constitute knowledge in a relevant sector. The determination of whether a mark is well-known involves applying the factors in Article 2 of the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, which provides persuasive guidance for interpreting South Africa's obligations under the Paris Convention.

Willis JA in a separate concurring judgment expressed concern about the 'copycat' nature of Truworths' intention to use the PRIMARK mark, noting that while imitation may be the sincerest form of flattery, a court sanctioning such endeavour may be disconcerting. However, he acknowledged that under The Gap precedent, the principle of territoriality prevails over policy considerations of morality in the absence of 'something more'. Willis JA observed that territorial isolation is vanishing due to mass air travel, television, internet and social media, and that if the principle of territoriality is to be revisited in light of changing social conditions, this requires internationally concerted political effort beyond the province of the courts. The main judgment also noted (without deciding) that Truworths' apparent purpose was to register the mark to prevent Primark from entering the South African market - a blocking strategy - and that Primark might seek to rely on ss 10(3) or (7) of the Act to resist any registration application by Truworths, though no opinion was expressed on the merits of such a challenge.

This case provides authoritative guidance on the interpretation and application of s 35(1) of the Trade Marks Act dealing with well-known marks entitled to protection under the Paris Convention. It clarifies that: (1) the identification of the 'relevant sector of the public' is central to determining whether a mark is well-known; (2) knowledge of a mark must be for commercial purposes related to the mark's function as a badge of origin and its attractive force in trade - knowledge for purposes of business study or emulation does not qualify; (3) the WIPO Joint Recommendation on Well-Known Marks provides persuasive guidance for South African courts; (4) knowledge among trade participants (buyers, distributors) only counts as knowledge in a relevant sector if those persons are seeking to do business with the mark owner, not merely to copy their business model; (5) the principle of territoriality remains paramount - a mark that is internationally prominent but not well-known to South African consumers is not entitled to protection as a well-known mark in South Africa. The judgment also reaffirms the strict requirements for bona fide use to resist expungement applications.