Our attorneys, Odete Da Silva and Steve van Wyk, successfully represented our clients in two applications heard concurrently in the High Court of South Africa, Gauteng Division, Johannesburg, concerning the infringement of a trade mark. This has been an ongoing dispute between the parties from as early as November 2020.
Pagel Schulenburg, assisted by Counsel, instituted the first application on behalf of its clients in June 2021, wherein an order was sought certifying the validity of the registration of its client’s trade mark in terms of section 52 of the Trade Marks Act 194 of 1993, interdicting and restraining the respondents from infringing its clients’ rights in the trade mark, and from passing off their goods as its client’s trade mark or utilising the trade mark in any manner.
In the “counter-application” launched by the respondents, an order was sought declaring our clients’ trade mark as being in breach of the Trade Marks Act, and therefore, unlawful. Conditional on the aforesaid order, the respondents attempted to claim for the assignment of our clients’ trade marks into their own names. The respondents additionally included a claim in the alternative in their application, wherein they sought the expungement of our clients’ trade mark from the trade mark register.
Pagel Schulenburg correctly highlighted to the Court that the respondents’ various claims contained multiple contradictions, and that the orders sought by the respondents were incompatible with each other. It was further argued that, in light of the trade mark certificates being registered to our clients, the respondents carried a burden to rebut this prima facie evidence of ownership. The court agreed with our argument, in that, the burden to rebut this evidence was insurmountable to the respondents.
In their defence, the respondents attempted to aver that they were the common law owner of our clients’ trade mark. The Court correctly found that, on the factual evidence tendered by Pagel Schulenburg, that the respondents could never have been the common law owner of the trade mark, as the respondents themselves have acknowledged that it was indeed our clients who created the name of the brand. The Court found that the conflicting nature of the submissions put forward by the respondents greatly impacted on their credibility.
It was common cause that the parties had previously been business partners, however, the respondents attempted to argue that the trade mark has been “given” to them by virtue of an oral agreement with our clients. It was noted that, in terms of section 39(7) of the Trade Marks Act, no assignment of a registered trade mark shall be of any force or effect unless it is in writing and signed by or on behalf of the assignor. Therefore, not only did this contention conflict with the respondents’ allegations in their papers, it also did not pass muster in terms of the Trade Marks Act.
The Court concluded its ruling with reference to section 52 of the Trade Marks Act. Under section 52(1), in any proceedings where the validity of a trade mark registration is in issue, a court which finds that the registration is valid may certify it to that effect. Section 52(2) then provides that, if the validity of the certified registration is unsuccessfully attacked in any subsequent proceedings, the attacking party must, unless the court otherwise directs, pay the other party’s full costs, charges and expenses as between attorney and client so far as that registration is concerned. The Court certified the validity of our clients’ trade mark registrations, interdicted the respondents from making any use of the trademark whatsoever, and ordered that the respondents pay the costs of the applications on an attorney and client scale.
Judgment was handed down on 25 May 2023 by the Honourable Judge Wepener in the High Court of South Africa, Gauteng Division, Johannesburg.
This case underscores the importance of formal trade mark registration and the legal protections it affords under the Trade Marks Act. For businesses and individuals looking to safeguard their brands, understanding the importance of intellectual property in the digital age is essential. The principle that trade mark assignments must be in writing also highlights the broader need for proper legal documentation in all commercial dealings.
Updated/Reviewed 24 March 2026 — Reviewed for accuracy, added internal link to intellectual property article, and added contextual summary paragraph.
Updated 3 November 2026 – Corrected the summary of section 52 of the Trade Marks Act 194 of 1993: the attorney-and-client costs rule in section 52(2) applies where a certified registration is unsuccessfully attacked in subsequent proceedings, and the court may direct otherwise. Added the year of the judgment (25 May 2023) and the section 39(7) reference for the rule that an assignment of a trade mark must be in writing and signed by or on behalf of the assignor.
