Africa: Genuine use and reputation in South Africa

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Africa: Genuine use and reputation in South Africa

South Africa's Supreme Court of Appeal recently handed down two important judgments. One dealt with genuine use, the other with reputation.

In Westminster Tobacco Co v Philip Morris Products SA (March 16 2017), the issue was whether use made by Westminster (part of BAT) of its registered trade mark Parliament was genuine, and enough to save the registration from attack for non-use. The authorities tell us that use must not be "merely token, serving solely to preserve the rights conferred by the mark". They say that the intention behind the use must be "to maintain or create a share in the market for the goods or services protected by the mark".

The court accepted that BAT did put the mark Parliament in use with a view to protecting the registration. But there was more to it than that – the company was also keen to test a cigarette that would compete with low-cost brands that were eating into BAT's market share. Even though BAT's launch of the low-cost cigarette was not a great success and did not last very long, this did not stop the use from being genuine. These are probably the most important words in the judgment:

Genuineness is to be contrasted with use that is merely token, but the line is a fine one, because the use may be minimal… it may in part be prompted by the fear of removal from the register and be directed at protecting the proprietor's trade generally or preventing the mark from falling into the hands of a competitor.

Herbal Zone v Infitech Technologies (March 10 2017) was a passing off case involving an unregistered mark. In this case an aphrodisiac product that was manufactured by a company in Malaysia was imported into, and sold in, South Africa by a South African company. Who owned the reputation in the mark? The court said that it clearly did not belong to the importer, who had disclaimed rights to the IP in its agreement: "In the face of that disavowal it is difficult to see on what possible basis Infitech could nonetheless acquire the very rights it agreed did not belong to it."

But the court did accept the principle that an importer/ distributor can acquire a reputation in the goods that it sells. But only where it adds something to the mark or get-up "to identify itself as the source of the goods".

Wayne Meiring


Spoor & Fisher JerseyAfrica House, Castle StreetSt Helier, Jersey JE4 9TWChannel IslandsTel: +44 1534 838000Fax: +44 1534 838001

info@spoor.co.ukwww.spoor.com

more from across site and SHARED ros bottom lb

More from across our site

A group of five lawyers who joined Cleary Gottlieb say they want to help expand the firm’s IP litigation practice
As we build up to another busy year for the IP STARS rankings and our Managing IP Awards, we assess some of the major IP firms and trends in Germany
Florina Firaru discusses making new connections, the art of flower arranging, and the biggest misconception about IP
The firm, which appointed three IP partners from A&O Shearman, wants to develop a tier one practice in Europe
The England and Wales appeals court handed down its judgment just seven working days after hearing the trademark dispute involving pharma company Merck
A host of law firms from across Europe and beyond helped bring the streaming technology dispute to a close
Hugues Derème, director general of the Benelux IP Office, unveils his vision for the region, how to improve IP awareness, and use of AI
A copyright win for AI firm Anthropic and a new executive order against law firm Jenner & Block were also among the top talking points this week
A principal at Schwegman Lundberg & Woessner explains how AI tools, including DeepIP, can position the firm to help clients
The firm explains why AI-empowered data analytics could make it a more efficient advocate for its clients
Gift this article