On 27 March 2025 Judge
Busang sitting in the High Court of Botswana at Lobatse handed down a judgment dismissing Specsaver Botswana’s claim for an interdict and other relief including
punitive costs against Strategic Ideal Holdings (Pty) Limited (Spec-Savers South Africa’s licensee), based on passing off.
The case is notable, from a legal standpoint, because:
a) it is only the second reported passing off judgment in Botswana;
b) it affirms the value of a registered trade mark in Botswana, being a positive right i.e. a right to ownership and use of the trade mark, and not simply a negative right to stop others from using; and
c) it shows that litigants in a passing off case must meet the evidentiary thresholds for establishing reputation and the misrepresentation.
Specsavers Botswana had
alleged the adoption of their mark SPECSAVERS in 1999 and use of the mark thereafter.
Spec-Savers South Africa had registered their trade mark from 2001 and begun
using it, through their licensee, in 2014. Specsavers Botswana claimed that
they had established a reputation symbolised by the mark such that the use by
Spec-Savers South Africa licensee of SPEC SAVERS was likely to cause deception
or confusion.
Spec-Saver’s South Africa
defended the application by challenging the evidence filed in support of the
passing off claim and by arguing that they were entitled to use their
registered trade mark SPEC SAVERS because the rights conferred on them by their
trade mark registration, were positive.
Section 74 and 81 of Botswana’s
Industrial Property Act No.8 of 2010 (the Act) states that:
"74. (1) The exclusive
right to a mark under this Act shall be acquired by Registration in
accordance with the provision under this Part.
81. (1) Registration of a
mark shall confer on the registered owner, the right-
(a)
to exclusive ownership of that mark;
(b)
to prohibit third parties from using the mark; and
(c)
to institute court proceedings against any person infringing his or her rights.”
The court referred to case
law out of Botswana, Namibia and South Africa on the delict of passing off
finding that Specsavers Botswana had failed to provide sufficient evidence of reputation
and misrepresentation, and that there was no detailed explanation of how the
Respondent's conduct caused confusion. Further, that Spec-Saver’s South
Africa’s trade mark was lawfully registered, providing them with a positive
right to use and own the trade mark. The case was therefore dismissed with
costs, including costs of counsel, and is a notable win for Spec-Savers South
Africa.
Specsavers (Pty) Limited
has appealed the decision.
