Supreme Court of Appeal of South Africa

MEDIA SUMMARY– JUDGMENT DELIVERED IN THE SUPREME
COURT OF APPEAL
From:
The Registrar, Supreme Court of Appeal
Date:
5 September 2018
Status:
Immediate
Please note that the media summary is intended for the benefit of the
media and does not form part of the judgment of the Supreme Court of
Appeal.
Truworths Ltd v Primark Holdings
The SCA today upheld an appeal by Truworths Ltd against a
judgment of the Gauteng Division of the High Court, Pretoria, dismissing
an application for the expungement of the mark PRIMARK from the
Trade Marks Register. The mark had been registered in 1976 but
Truworths contended that there had been no bona fide use of the mark for
the statutory period prescribed in s 27(1)(b) of the Trade Marks Act 194
of 1993.
Primark Holdings, the proprietor of the mark, contended that it was
a well-known mark entitled to protection under the provisions of the Paris
Convention and protected under s 35(1) of the Trade Marks Act. The
court analysed the requirements for a mark to be recognised as a well-
known mark among the relevant sector of the South African public. It
then analysed the evidence and held that the mark was not a well-known
mark in terms of the requirements of s 35(1) and the Paris Convention.
As there was no evidence of bona fide use of the mark during the
statutory period the SCA upheld the appeal and ordered the expungement
of the mark and its removal from the register.