Tuesday 5 May 2009

Darren Olivier

The Gap trenches dug again

Litigation in South Africa over The Gap trade mark has raged for well over a decade now. The case, primarily between Kingsgate Clothing (Pty) Ltd (previously, the Moola Group) and The Gap Inc, is South Africa's equivalent of the Bud/Budweiser and Apple Computers/Apple Corp trade mark wars.

The Gap's case has been run by Nola Bond's (DM Kisch) team for the majority of the time (which includes SC Cedric Puckrin). Kingsgate have primarily used the law firm Macroberts Inc, under the strategic guidance of Philip Ginsburg, another well known Senior Counsel. Despite court successes by both sides neither side has managed to persuade a Court to give them outright exclusivity to the GAP trade mark in RSA. In essence, this has become a fascinating (if not tiring) battle between the different principles governing rights to trade marks and protectable goodwill and reputation in South Africa. Meanwhile shoppers are caught in no man's land.

The latest in the saga is this judgment handed down last month over a scrap clarifying issues for yet another trial. Before the Court were two separate applications, firstly an application to amend particulars of claim and secondly an application by Kingsgate to join Stuttafords as an additional defendant in reconvention. Both sides were successful in their applications but not without detailed legal argument with input from no less than seven advocates (in addition to the attorneys), which will give some indication as to why a commercial settlement has not ever been achieved to date, and the extent to which both sides wish to go to achieve success.

The case is useful if you are interested in principles of joinder (adding a defendant or plaintiff to an action) or if you wish to be reminded again that a passing off action is different from trade mark infringement. It is not a case to be read out loud if you battle with your "r"s - it is filled with reconventions, replications, res judicatas, reliefs and registrations.

Darren Olivier

Darren Olivier

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