Our director, Odete Da Silva and associate, Steve van Wyk, assisted by Adv Conrad Acker and Adv Rushil Bhima of the Johannesburg Bar, successfully defended our clients’ trade mark rights in a significant case before the High Court of South Africa. 

This notable matter involves two key applications regarding trademark infringement. In June 2021, Pagel Schulenburg initiated the first application, seeking an interdict against the unlawful usage of our client’s trademark by a Chinese national and his affiliated local and Chinese entities, and an order validating our client’s trademark registration. This was countered with an application seeking to invalidate our client’s trademark and to have the trademark assigned to the opposition or expunged from the register of trademarks.

The Court agreed with our argument that, as the rightful owner of the trademark, our client had the exclusive right to use it and could enforce their rights to prohibit any other party from infringing the trademark, including the opposition in the matter. The opposition claimed to be the common law owners of the trademark, however, we presented evidence which disproved such claims and highlighted various inconsistencies in the opposition’s version. The opposition further attempted to argue that a partial assignment of the trademark has taken place. Pagel Schulenburg highlighted that the Trade Marks Act in fact prohibits an assignment of this nature, and that, the alleged agreement, if found to have existed, would consequently be void.

The opposition also alleged an oral agreement transferring the trademark to them. However, this was dismissed by the court as invalid under the Trade Marks Act, which requires such agreements to be documented and signed.

Following the court’s initial decision, the respondents filed an application for leave to appeal, which was dismissed with costs being awarded in favour of our clients.

For the complete judgment, you can read more here.

This case underscores Pagel Schulenburg’s commitment and success in defending our clients’ intellectual property rights.