Protection of Famous Foreign Trade Marks
The question of the protection enjoyed in South Africa by famous foreign trade marks recently received the attention of the Appellate Division of the Supreme Court, the court of final appeal, in the case of Victoria’s Secret Inc. v Edgars Stores Limited, Case No. 428/92 -Unreported. In the past the South African courts have adopted the attitude that common law protection for a trade mark is only available when business has been conducted in South Africa under that trade mark resulting in a local goodwill; a local reputation stemming only from international use has not been considered to be sufficient to afford a foreign mark protection in South Africa in the absence of registration.
In Victoria’s Secret, the local company, Edgars, had seen the VICTORIA’S SECRET trade mark used in the United States of America by Victoria’s Secret Inc., in relation to rather risqué lingerie. They liked what they saw and began producing and selling the same style of product under the identical trade mark, VICTORIA’S SECRET in South Africa. The local VICTORIA’S SECRET products were virtually indistinguishable from the foreign products sold under the same trade mark.
Edgars made application to register VICTORIA’S SECRET in class 25 and shortly thereafter Victoria’s Secret Inc., followed suit. The Registrar of Trade Marks invoked the procedure for dealing with concurrent conflicting applications against both parties' applications and the matter proceeded, after the filing of evidence by both parties, to a formal hearing before the Registrar. The Registrar followed the approach of the courts and ruled that Edgars’ application should take precedence over that of Victoria’s Secret Inc., with the result that the former’s application was accepted and the latter’s refused. The evidence in these proceedings showed that the foreign VICTORIA’S SECRET trade mark had been very widely used in the United States of America and had also been used internationally but no actual use of the mark on goods sold in South Africa was proved. The American product had been advertised in numerous international journals which circulated in South Africa. Victoria’s Secret Inc., attempted to show a local South African reputation in its trade mark VICTORIA’S SECRET by relying on "spill over" advertising in such journals.
Victoria’s Secret Inc., appealed to the Appellate Division of the Supreme Court and the Appellate Division upheld the decision of the Registrar. The Appellate Division was unmoved by arguments regarding the global market place and that allowing local traders to appropriate well known foreign trade marks could impede foreign investment in South Africa by the owners of trade marks which had been appropriated. Attracting foreign investment is a very topical issue in South Africa in the light of the country’s metamorphosis from being an international polecat to the returned prodigal son. There is a suggestion in the Appellate Division’s judgment that the existence of a de facto proven local reputation in the foreign mark may have been sufficient to cause Victoria’s Secret Inc’s application to prevail but the evidence fell short of establishing the existence of such a local reputation. In the final analysis the Appellate Division took a hard line approach to protecting well known foreign trade marks. There is, however, some consolation for proprietors of famous foreign trade marks because the new South African Trade Marks Act which is expected to come into operation towards the end of the year specifically grants protection to famous foreign trade marks which are shown to have a reputation in South Africa.
Spoor & Fisher