Friday, 6 June 2008

Latin tags don't avail Turbek

Writing in World Trademark Report, Lelo Nkadimeng (Spoor & Fisher, Pretoria) reviews A&D Spitz (Pty) Limited v Turbek Trading CC (12 May 2008), in which the South African High Court ruled that Turbek's use of the trade mark KG amounted to passing off of Kurt Geiger's well-known KG acronym KG as well as infringing its KG registered trade mark.

Spitz held registrations of KURT GEIGER for goods in Classes 9 and 25, and for KG in Class 9. Use of KURT GEIGER dated back to 1971, and KG to around 1994, for clothing and footwear. Turbek began using a KG mark and Spitz objected, maintaining that by virtue of the fact that the marks were similar and both used KG for footwear, there was a likelihood of confusion. The court agreed. Additionally, use by Turbek of the trade mark KG in relation to footwear was likely to cause confusion and deception with Spitz's registration in respect of sunglasses, since footwear and sunglasses were regarded as being similar goods. The court also ordered cancellation of Turbek’s KG registrations for goods and services in Class 25 and 35.

This case is notable for the court's treatment of Turbek's defence based on Spitz's delay. Said the court, delay, waiver, estoppel, volenti non fit iniuria (roughly translated as "if you consent, you cannot complain") and a pactum de non petendo (an agreement not to sue) could cause a trade mark owner to forfeit its rights -- but mere delay per se does not have such a consequence [the text of this feature can be read in full here].

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