THE LEGEND OF PANDORA’S BOX
Legend has it that the first woman, Pandora, was sent as a curse to Zeus’ men and was given a present upon her marriage. The present was a box that she was told never to open. Needless to say her curiosity got the better of her and she unleashed 8 demons into the world. The first 7 being the 7 deadly sins, and the last, which she managed to capture, was hope.
Recently, Pandora opened the Truworths box and they got themselves into a situation over which they had very little control.
BACKGROUND TO THE MATTER
Upmarket jewellery outlet Pandora who describes themselves as “purveyors of the finest collection of silver and gold jewellery ideal for your special moment” recently went head to head with clothing store Truworths Limited in the High Court in respect of the ESSENCE trade mark.
Truworths is the registered proprietor of the ESSENCE trade mark within South Africa but Pandora filed an application to cancel the ESSENCE trade mark from the trade marks register for non-use thereof by Truworths Limited. According to Truworths it has been the proprietor of the ESSENCE trade mark for the last 23 years. Pandora, however, alleged that ESSENCE was no longer being used by Truworths Limited in respect of the goods for which registration was obtained, i.e. jewellery.
Under the South African Trade Marks Act 1993 “a registered trade mark may, on application, to the Registrar by any interested person, be removed from the register in respect of any of goods or services in respect of which it is registered, on the ground that at a date three months before the date of the application, a continuous period of five years or longer has elapsed from the date of issue of the Certificate of Registration during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by the proprietor.”
Therefore, two criteria have to be met:
- there has to be a continuous period of five years or longer of use since the date of the issue of the Registration Certificate of a registered mark; and
- that there was no bona fide (genuine) use of the trade mark in relation to the goods in respect of which the registration was sought.
ARGUMENT IN COURT
Arguments for the removal of the ESSENCE trade mark centered around Pandora asserting that there was no use by Truworths of the trade mark ESSENCE in relation to the goods i.e. the jewellery in respect of which the registration was held. In terms of the Trade Marks Act “the application against the proprietor against whom it is being alleged is not using the trade mark has the onus to prove that they are still making use of that trade mark.” In this instance Truworths then had to prove that, at the date three months before the litigation started, it had been using its ESSENCE trade mark for a period of at least five years since the date of issue of its Registration Certificate and such use was bona fide.
In supplying proof, Truworths stated that the ESSENCE range fell under its formal range of clothing and could be found in selected stores and that it had been using the mark for twenty three years in respect of many of its garments which were clothing with a jewellery type appearance. The jewellery was attached to some of the clothing and could be detached and worn separately. The court was shown a white shirt with a detachable necklace and a stock sheet was presented showing that it had recently sold 305 of those garments. Pandora’s counsel argued that Truworths had not demonstrated that it had used the trade mark in relation to any commercially recognized category and that it was not used in respect of jewellery for which the registration was obtained. On the other hand Truworths indicated that while it did not use the trade mark exclusively for jewellery it was using it in relation to its clothing because the jewellery formed part of the garments.
The judge ruled in favour of Truworths indicating that jewellery was covered by the trade mark registration held by Truworths and the clothing chain was still using it and therefore the application for cancellation of the mark ESSENCE from the trade marks register was denied.
It seems that when Pandora opened the box it had no control over the contents from the spill out from Truworths. However, it appears that the definition of clothing which falls into Class 25 has been stretched to include and encompass goods being offered in the jewellery class which falls into Class 14. Can it be said that jewellery and clothing are synonymous? Can clothing look like jewellery? Can 305 sales equate to continuous use for a period of five years? It is believed that these are questions that could have been explored more in depth by the court in its assessment of the facts before it.
However, what is evident is that it is essential for a trade mark owner to make use of its trade mark on an ongoing and consistent manner. Token use will not be sufficient and as a result one could then be fighting the opening of one’s own Pandora’s Box in defending an application for the cancellation of one’s registration.
Kim Rademeyer – Partner