Chhattisgarh HC: Father Must Provide Maintenance and Marriage Expenses to Unmarried Adult Daughter  ||  Delhi HC Rules That ‘Hermès’ and the 3D Shape of its ‘Birkin’ Bag are Well-Known Trademarks in India  ||  Kerala HC: Arrest is Illegal if Accused isn’t Produced in 24 Hours and Rearrest From Prison is Barred  ||  Supreme Court: Treating Every Sour Relationship as Rape Undermines the Seriousness of the Offence  ||  Supreme Court: Section 7 IBC Application Cannot be Rejected for Curable Defects in Affidavit  ||  NCLT Kochi: Sec 7 Insolvency Cannot be Filed Against Guarantor Without First Enforcing the Guarantee  ||  Patna High Court: Mere Two-And-A-Half-Year Incarceration is Not Sufficient for Bail under UAPA  ||  Bombay HC: Insolvency Cannot be Used to Evade a Family Court’s Maintenance Order  ||  Kerala HC: Forklifts and Factory Cranes Are Motor Vehicles and Must be Registered under MV Act  ||  Guj HC: Edible Crude Palm Kernel Oil Qualifies for Duty Exemption; End-Use Condition not Applicable    

Grupo Bimbo S.A.B. v Takis Biltong - (14 Dec 2023)

A mark can be opposed or cancelled, if it is identical to or similar to a trade mark which is already registered

Intellectual Property Rights

The applicant, a Mexican company which traded in many countries including South Africa, was the proprietor of the impugned mark. It was registered in South Africa on 6 June 2012. The respondent was a South African company which sold biltong and other snack products in South Africa. The respondent applied to the high court, in terms of Section 24 of the Trade Marks Act, 1993 (the Trade Marks Act), to have the impugned mark expunged. The court of first instance dismissed the application.

The respondent appealed against that decision to the full court. On appeal, the majority set aside the order of the court of first instance and replaced it with one cancelling the impugned mark. The majority, accordingly, held that the requirements of Sections 10(12), 10(14), 10(16), and 10(17) of the Trade Marks Act had been satisfied. Aggrieved by that outcome, the appellant petitioned this Court for leave to appeal which was dismissed.

For the applicant to succeed in the application for special leave to appeal against the order of the majority, it had to show that there were special circumstances in existence. And in order to do the applicant had to show that: (a) the marks were not similar and that there was no likelihood of deception and confusion; (b) the goods were not similar; (c) the impugned mark was unlikely to take advantage of or be detrimental to the respondent’s registered mark; and (d) the respondent did not have prior existing rights in class 30 goods. The applicant failed to establish special circumstances and that factor alone was sufficient reason to dismiss the application for special leave to appeal.

Section 10(17) of the Trade Marks Act provides that, a mark can be opposed or cancelled if it is identical to or similar to a trade mark which is already registered and which is well-known in the Republic, if the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of deception or confusion.

The majority concluded correctly that the applicant’s impugned mark was an entry wrongly made in, and wrongly remaining on, the trade mark register and it thus fell to be cancelled in terms of Sections 10(12), 10(14) and 10(17) of the Trade Marks Act. The proposed appeal had no reasonable prospects of success. The applicant had failed to establish special circumstances. Application dismissed.

Tags : LEAVE TO APPEAL   SPECIAL CIRCUMSTANCES   EXISTENCE  

Share :        

Disclaimer | Copyright 2025 - All Rights Reserved