Trade mark non-use cases come up a lot. If a trade mark hasn’t been used for the goods or services covered by the registration for a continuous period of five years or more, the registration can be cancelled by a competitor. The issue came in a recent case involving Truworths- Pandora v Truworths (Gauteng, 28 May 2015). In the judgement Judge Fourie reiterates some general principles. For example:
• The use must be genuine. What this means is use with the ‘object or intention primarily of protecting, facilitating and furthering trade in such goods, and not for some, ulterior motive.’
• Although the person attacking the registration must show that it has made some enquiries that suggest that there has been no use, the responsibility for proving use is with the trade mark owner, who is, of course, the party in the know. Once ‘an applicant has brought itself within the parameters of section…. (it) imposes an onus on the proprietor of the trade mark to prove relevant use… this onus is not a mere shifting of the evidentiary burden, but has the burden of a true onus.’
But it’s the facts of the Truworths case that make it memorable. That’s because the registration under attack was for the mark Essence in class 14 for jewellery. Truworths’s evidence, however, showed use of the mark Essence over the relevant period not on jewellery as such, but rather on clothing described as featuring ‘embellishments with a jewellery-type appearance’. In other words, garments featuring necklaces that could be detached and worn separately.
Did this count as use on jewellery? The company applying for cancellation said no, arguing that the real issue was that the detachable jewellery was not sold separately. But the judge disagreed, saying that the test is an objective one aimed at determining what the reasonable customer would think. The judge said this: ‘This particular garment includes an item of jewellery covered by the Class 14 registration and therefore the item constitutes goods in respect of which the trade mark is registered.’Even though the sales in the bejewelled garments were quite small (305 items), the ‘use took place in the context of commercial activity’.
So the registration stood.