South Africa - Trade Mark Certificates of Registration Issued in Error
From time to time in opposition matters, the Registrar of Trade Marks has erroneously issued the Certificate of Registration for a trade mark. This happened in the recent matter between Hugo Boss AG and Neville Dorrington. Dorrington applied to register the trade mark BOSSI for goods in classes 18 and 25. Hugo Boss opposed these applications based on its prior trade mark registrations in the same classes.
During the opposition procedure and at a time when an extension of time had been granted by the Registrar to Hugo Boss, the Registrar issued the Certificates of Registration. A practice had been adopted by trade mark attorneys and their clients in these circumstances whereby the incorrectly issued Certificate of Registration was returned to the Registrar. He corrected the error and the usual opposition procedure continued. This practice was followed in this matter.
After both parties filed further evidence, the pleadings closed and the matter was ready to be heard.
In the intervening period Judge McCreath gave judgment in the matter of Home Hyper City (Pty) Ltd v Homemark (Pty) Ltd. He held that the Registrar could not remove the trade mark from the Register as he had done in that case. The registration could only be removed by a competent authority. It was not valid to return the certificate to the Registry and simply change the legal status of the trade mark. The registration remains unaffected and all parties are bound by the legal consequences of the registration. The opposition could no longer proceed and it was dismissed with costs. Thus, the act of the Registrar can only be set aside on review or appeal. The Registrar may himself apply to court to rectify the Register.
In view of this judgment, Dorrington raised a preliminary point at the hearing, that despite having returned the Certificates of Registration, the Registrar of Trade Marks was not empowered to remove the registration of the BOSSI trade mark in the manner that he did.
Judge Spoelstra, after arguments by both sides, regarded himself as bound by the judgment of Judge McCreath in the Home Hyper City case. He ruled that the irregular registration of Dorrington's BOSSI trade mark was a judicial act intentionally performed by a competent official in the exercise of his official functions, and these trade mark registrations remain in force until they are set aside on review or appeal or in any other legally permissible manner. The conduct of the Registrar in correcting the error is not permissible in terms of the Trade Marks Act or Regulations and is thus a nullity. The court found that the preliminary point was well taken, and Hugo Boss' opposition was dismissed with costs.
Spoor & Fisher