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HONEST CONCURRENT USE

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We had an interesting South African trade mark decision which dealt the issue of honest concurrent use. In the case of Woolworths v KR Agencies, Woolworths opposed an application filed by a company called KR to register a trade mark which comprised two elements – the letters JT’s in a stylized form, as well as the slogan ‘Your name can depend on it’ – in respect of clothing. The opposition was based on a number of grounds including an earlier registration belonging to Woolworths for JT for clothing.

The judge had no doubt that confusion was likely. The interesting issue, however, was whether KR could rely on the use that it had made of its mark in order to get registration on the basis of honest concurrent use. Section 14 of the Trade Marks Act says that you can get registration of a mark in circumstances where it clashes with an earlier registration ‘in the case of honest concurrent use or of other special circumstances which make it proper to do so.’ It also says that a certain procedure must be used – the Form TM1 (the application form) must state that it is an honest concurrent user application, and there must be a statement of case and an affidavit setting out details of the use. KR had not followed this procedure – it had simply responded to the opposition that Woolworth had filed by submitting evidence of its use and alleging that it was entitled to registration on the basis of honest concurrent use. This wasn’t good enough said the judge.

Acknowledging that this somewhat technical and pedantic interpretation of the law might be controversial and open to attack, the judge said that even if he was wrong the claim that KR was entitled to registration on the basis of honest concurrent use had to fail for another reason. The reason was this: although KR had used the trade mark for many years, it had in fact used it under licence from a UK company which had registered the mark in South Africa; when the UK company had allowed its registration to lapse KR had filed an application to register the mark in its own name; when Woolworths had opposed that application KR had claimed that its use of the mark (as a licensee of the UK company) entitled it to registration. Not so said the judge – Section 38 says that any authorised use by a licensee of a registered trade mark is deemed to be use by the registered proprietor and by no other party. So KR’s use had not been its own use and didn’t count.

The facts of this case were unusual. But the decision is reminder that honest concurrent use applications need to be handled with care.

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