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December 1, 2018 Vol. 73 No. 20 Back to Bulletin Main Page

SOUTH AFRICA: Supreme Court of Appeal Considers Whether PRIMARK Is Well Known

The South African Supreme Court of Appeal decision in the matter Truworths Ltd v. Primark Holdings handed down on September 5, 2018, grappled with the question whether the clothing retail brand PRIMARK enjoys protection in South Africa as a well-known mark. In South Africa, the law provides protection to trademarks that, although not registered, may be well known locally.

Primark held a trademark registration for PRIMARK in Class 25 for clothing in South Africa. The South African clothing retailer Truworths applied to cancel that registration on the basis of non-use. Primark had indeed not made use of the mark in South Africa, but defended the cancellation on the basis that, because its trademark is entitled to protection as a well-known mark, the non-use requirements do not apply to it in terms of Section 27(5) of the Trade Marks Act 194 of 1993.

The essential question was whether or not PRIMARK is well known in South Africa. In establishing whether a mark is well-known, Section 35(1A) of the Act states that it is necessary to consider knowledge of the trademark in “the relevant sector of the public.” Primark submitted evidence to show that people in the South African fashion world know the PRIMARK trademark, as do South Africans who travel abroad or read magazines like Marie Claire and Elle. It argued that these groups constituted the relevant sector.

The court highlighted that the relevant sector will always be dependent on the nature of the goods or services, and that in some cases there might even be more than one relevant sector. The judge rejected the relevant sectors identified by Primark, holding that the relevant sector was, far larger, namely, “residents in urban and peri-urban areas with some disposable income after paying for life’s necessities[,] . . . looking for inexpensive clothing with some aspiration to be stylish.”

The evidence provided by Primark was, accordingly, insufficient to establish knowledge of PRIMARK among the relevant sector of the public as identified by the court, and so the application for cancellation succeeded, although this would not preclude Primark from opposing any application filed by Truworths for PRIMARK.

The Primark case illustrates the importance, in cases pertaining to well-known trademarks, of identifying the correct relevant sector and then ensuring that evidence is furnished to establish knowledge of the trademark in that sector.

The issue of reaching a finding that might allow a South African company to adopt an international brand seemingly troubled the judges. Judge Willis, in a short concurring judgment, suggested that the court’s hands were tied because of the principle of territoriality of trademarks, which says that a company can adopt the mark of a foreign company unless there is “something more” involved, which generally means something fraudulent. The judge, however, went on to highlight that territorial isolation is a vanishing phenomenon, and so the relative former ease with which a company could legitimately adopt an international brand is waning as global territorial divides diminish.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association