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.
It is worth being precise about why a partial assignment argument of this kind runs into difficulty. Section 39(2) of the Trade Marks Act does allow a registered trade mark to be assigned in respect of all or only some of the goods or services for which it is registered, so a partial assignment is not prohibited outright. The constraint sits in section 39(4): where the result of an assignment or transmission would be that use of the mark by different persons, in South Africa or elsewhere, gives rise to a likelihood of deception or confusion, section 10(13) applies and the mark becomes vulnerable on that ground. A purported split of a single mark between rival users of the same goods is therefore liable to fail on the confusion ground rather than on the bare fact that it is partial.
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. Section 39(7) provides that no assignment of a registered trade mark, or of a mark that is the subject of a pending application for registration, shall be of any force or effect unless it is in writing and signed by or on behalf of the assignor. An oral transfer is of no effect no matter how firmly the parties believed it had been agreed. These protections under the Trade Marks Act 194 of 1993 reinforce the importance of proper registration and documentation of trade mark rights.
Where a valid written assignment does exist, section 40 requires the person who becomes entitled to the mark to apply to the Registrar on the prescribed form to register their title. On receipt of the application and satisfactory proof of title the registrar registers them as proprietor and enters particulars of the assignment in the register. The application must recite the effective date of the assignment, and where it is lodged more than 12 months after that date the applicant is liable to pay a prescribed penalty. Recordal is what makes a change of ownership apparent from the register, which is ordinarily where any later dispute about ownership starts.
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 (SAFLII reference: ZAGPJHC 576/2023).
This case underscores Pagel Schulenburg’s commitment and success in defending our clients’ intellectual property rights. Under section 34(1)(a) of the Trade Marks Act, the registered owner of a trade mark has the exclusive right to use it and to restrain others from using an identical or confusingly similar mark on the same or similar goods or services.
Updated 14 April 2026 — Added statutory context for the infringement claim under section 34(1)(a) of the Trade Marks Act 194 of 1993.
Updated 28 July 2026 — Added the precise statutory basis for the assignment findings. Section 39(7) of the Trade Marks Act 194 of 1993 provides that no assignment has any force or effect unless it is in writing and signed by or on behalf of the assignor. Clarified that section 39(2) permits a registered mark to be assigned for only some of the goods or services covered, so a partial assignment is not prohibited as such, and that the difficulty arises under section 39(4) read with section 10(13) where the resulting concurrent use would be likely to deceive or confuse. Added the section 40 requirement to record an assignment with the Registrar, including the prescribed penalty where recordal is lodged more than 12 months after the effective date.
