Turbek Trading CC v A & D Spitz Limited

Turbek Trading CC, controlled by Mr Kenneth Gordon, is the proprietor of two registered trade marks consisting of the initials 'KG' - one for clothing, footwear and headgear (class 25) and one service mark (class 35). Turbek filed its applications on 7 March 2000 originally for 'KG Italia', but amended to 'KG' simpliciter before registration on 29 February 2005. A & D Spitz Ltd had used the trade mark 'Kurt Geiger' for footwear and clothing since the 1970s and had registered it in 1990 for boots, shoes and slippers. Spitz claimed it had used 'KG' as a mark before Turbek's application date and sought expungement of Turbek's registrations, alleging prior rights. Spitz only applied to register 'KG' on 20 September 2001. Spitz also claimed trade mark infringement based on its 'KG' registration in class 9 (optical devices) and passing-off. The High Court upheld all three grounds and ordered expungement. Turbek appealed.

• Whether Spitz had an existing common-law right in the trade mark 'KG' as at 7 March 2000 for purposes of section 10(16) of the Trade Marks Act 194 of 1993
• Whether delay in enforcing rights amounts to acquiescence that disentitles a party from attacking trade mark registrations
• Whether a registered trade mark can be an absolute defence to a passing-off claim
• Whether Turbek's amendment from 'KG Italia' to 'KG' affected the priority date for purposes of section 10(15)
• Whether 'KG' formed part of Spitz's goodwill separately from the 'Kurt Geiger' mark

The appeal was upheld with costs. The order of the High Court was set aside and replaced with an order dismissing Spitz's application with costs.

To establish an existing right in an unregistered trade mark for purposes of section 10(16) of the Trade Marks Act, the claimant must prove it originated, acquired or adopted the mark and used it to the extent that it gained reputation as indicating goods belonging to that claimant - the same onus applicable in passing-off claims. Use of a combination mark does not necessarily establish separate rights in each component where one element is dominant. A registered trade mark cannot be defeated by an unregistered common-law mark without first establishing grounds for revocation of the registration; the proviso in section 43 (now section 34(2)(g)) does not permit an unregistered mark to trump a registered mark. Acquiescence is not a substantive defence in South African law; delay may only provide evidence for other defences or have procedural consequences.

The court suggested that delay in enforcing trade mark rights may be a factor in exercising discretion to refuse declaratory relief or interim interdicts, leaving claimants to pursue damages. The court also noted that intellectual property rights are often described as 'negative rights' but observed that trade marks are granted on the understanding they will be used, evidenced by revocation provisions for non-use. The court expressed disagreement with Patel J's statement in Botha v White that South African law recognizes acquiescence as a distinct defence from estoppel, noting this failed to account for binding authority. The court also commented that indirect review of administrative decisions (the Registrar's acceptance of the amendment) is generally not countenanced in South African law.

This case is significant for clarifying several important principles in South African trade mark law: (1) it establishes that acquiescence is not a substantive defence in South African law, contrary to dicta in some earlier judgments; (2) it clarifies the relationship between registered trade marks and passing-off actions, holding that a registered trade mark cannot be trumped by an unregistered mark without first establishing grounds for revocation; (3) it sets out the requirements for establishing common-law trade mark rights under section 10(16), requiring proof of reputation in the specific mark claimed, not just in a composite mark; and (4) it addresses the effect of amendments to trade mark applications on priority dates.