SAGA also filed a counter application for expungement of SAJGA’s trade mark (consisting of the word mark South African Junior Golf Association) in class 41 on the basis of its existing registrations in the same class, relying on s 10(12) and 10(14) of the SA Trade Marks Act. The Court’s reasoning here is, with respect, unfortunate. It held that SAGA had to prove reputation to rely on either s.10(12) or s.10(14). This is not correct; the cases referred to by the court both refer only to the precursors of s 10(12). Section 10(14), its precursors and UK equivalents have never required proof of reputation as precondition for success. The existence of the SAGA registrations should have acted as complete bar to the SAJGA mark. It is quite incomprehensible that the SAJGA mark was ever allowed on the register – not only is it in the same class as that of SAGA (one of its marks being the word mark South African Golf Association) but the specification is not limited to junior golf (neither does it refer to any charitable, or Christian activities).
The court’s argument that the two bodies do not render the same service is irrelevant for infringement proceedings; the specification for SAGA’s marks is sufficiently broad to cover that for the SAGJA mark.
Hopefully SAGA will take the matter on appeal, if only to clarify this court’s interpretation of the test for expungement in terms of s 10(14).
But, in the light of this judgment, I wonder what the chances are of a successful opposition by SAIIPL (Southern African Institute of Intellectual Property Law) to the newly formed SAAPIL (South African Association of Personal Injury Lawyers)? Probably not good!