IN THE HIGH COURT OF SOUTH AFRICA
(GAUTENG DIVISION, PRETORIA)

 CASE NO: 47204/2021
REPORTABLE: NO
OF INTEREST TO OTHER JUDGES: NO
REVISED: YES
DATE: 02/03/2022
In the matter between:
3RD LEVEL MARKETING AND MEDIA                                                    APPLICANT
GROUP (PTY) LTD
AND
SOUTHAFRICAN BROADCASTING                                                   RESPONDENT
CORPORATION LTD
___________________________________________________________________
JUDGMENT 
___________________________________________________________________

This Judgment was handed down electronically by circulation to the parties’ and or parties representatives by email and by being uploaded to CaseLines. The date and time for the hand down is deemed on February 2022.  

BAQWA J:
A.	INTRODUCTION 

[1]	The applicant seeks the removal of the Trademarks in terms of section 27(1), to  
         10 (3) and 10 (7) of the Trademarks Act,194 of 1993 (“The Act”).

[2]	The applicant has counched the relief sought in the following terms
2.1 Removal of the Tshivenda Music Awards trademark in classes 9 and 41;
2.2 Removal of TSHIMA trademark in class 9, 25, 38, and 41;
2.3 Costs of the application;

[3]	The applicant launched this application at the Tribunal of the Registrar of Trade 
          Marks on 6 March 2020 for inter alia, the rectification of the Register of Trade 
          Marks, by way of expungement of the registrations of the mark in the classes  
          mentioned above. 

[4]	The Registrar referred the application to the High Court for hearing in terms of 
         the provisions of section 59 of the of the Act.

[5]	Section 27 (1) of the Act provides:
“Subject to the provisions of section 70 (2), a registered Trademark may, on application to the court, or, at the option of the applicant and subject to the provisions of section 59 and in the prescribed manner, to the registrar by any interested person, be removed from the register in respect of which it is registered, on the ground either.
a)	that the Trademark was registered without any bona fide intention of the applicant for registration that it should be used in relation to those goods or services by him or any person permitted to use the trademark as contemplated by section 38, and that there has in fact been no bona fide use of the trademark in relation to those goods or services by any proprietor thereof or any person so permitted for the time being up to the date three months before the date of the application”.

[6]	Section 10 (3), 10 (4) and 10 (7) provides as follows:
“The following marks shall not be registered as trademarks or, if registered, shall, subject to the provisions of section 3 and 7, be liable to be removed from the register:
(3) a trademark in relation to which the applicant for registration has no bona fide claim to proprietorship;
(4) a mark in relation to which the applicant for registration has no bona fide intention of using it as a trademark, either himself or through any person permitted or to be permitted by him to use the mark as contemplated by section 38;
(7) a mark the application for registration of which was made mala fide”.

[7]	Section 38(1 and (2) of the Act provide:
“Where a registered trademark is used by a person other than the proprietor thereof with the licence of the proprietor, such use shall be deemed to be permitted use for the purpose of subsection (2). 
(2)  The permitted use of a trademark referred to in subsection (1) shall be deemed to be used by the proprietor and shall not be deemed to be used by a person other than the proprietor for the purposes of section 27 or for any other purpose for which such use is material under this Act or at Common Law”.

B.	BACKGROUND

[8]	The background to this application is a contested terrain as the parties are not in 
         agreement regarding the events proceeding the application for registration.

[9]	In its founding affidavit the applicant states that prior to February 2012, it noticed 
         that there were no awards for Vhavenda people and Tshivenda music.

[10]	The applicant goes on to state that during or about February 2012, the applicant 
         met with the respondent’s Group Executive Mr Lesley Ntloko, and the 
         respondent’s General Manager of Public Broadcasting Stations Portfolio, Mr  
         Zolisile Mapipa, “to negotiate with the SABC to have the Awards broadcasted 
         and advertised on any of the SABC’s broadcasting platforms in order for The    
         Awards to gain exposure, support and airtime”. The exact date of the meeting 
         and the detail of what was discussed is not clear.

[11]	Subsequent to this meeting, the applicant was introduced to the Marketing 
          Manager of Phalaphala FM radio station with whom he met to pitch the 
         ‘Tshivenda Music Awards’ concept.

[12]	Subsequently, the applicant continues to say, in August 2012, the applicant and 
        respondent entered into a trade exchange agreement.

[13]	The applicant alleges that the terms of the agreement were that the applicant 
          would provide the station with Marketing rights, branding rights, public relations 
          services and media services to the value of R880 000 and, in exchange, the 
          respondent and the station would provide the applicant with airtime to the value 
          of R100 000 which would be used exclusively to promote the Station’s 
          involvement with the Awards.

[14]	The applicant states, further, that it wanted to broadcast and gain media 
         coverage of the Awards.

[15]	The Awards were held on 17 November 2012.

[16]	The applicant also states that in addition to referring to the event as Tshivenda 
        Music Awards it also used the abbreviation “TSHIMA” in reference to the same 
        event.
[17]	The applicant also contends that prior to its meetings with executives at the 
         SABC and representatives of the Station, the respondent was not using the 
         trademarks and only came to know about the Awards after its presentation to 
         them.

[18]	Responding to the background as set out by the applicant, the respondent, 
         which is the South African Broadcasting Corporation Ltd which operates 19 
         radio stations and five television channels which provide broadcasting services 
         to the South African Society as part of its mandate, the respondent states that it 
         regularly hosts awards shows, which awards shows are broadcast via its 
         television and radio channels.

[19]	The respondent protects the intellectual property associated with these awards 
          shows by registering the relevant trade marks for the relevant goods and 
          services. It currently has 15 trademark registrations relating to 
          awards shows in addition to the registrations in issue. The respondent’s earliest 
          current Trade Mark registration is for the mark, SABC PEOPLES CHOICE 
          ADVERTISING AWARDS, registered in class 35 on 18 March 2004.

[20]	During 2011 the Station noticed that many Tshivenda –language musicians were 
         not enjoying the same exposure and success as other musicians in the broader  
         South Africa music industry. The respondent identified that the majority of 
          Tshivenda-language musicians were not recognised by the South African Music 
          Awards as they were either not effectively managed and were not being signed 
          by record music labels.  The Station then proposed hosting an awards event for 
          the Tshivenda-language music and the respondent states that this is referred to 
         and confirmed in the Strategic Implementation Plan for 2012, a document 
         created on 16 February 2011 and completed on 10 November 2011 (“The 
         Strategic Plan”). The plan proposed a budget for the Awards of R150 000 and 
         funding by means of trade exchange agreements. The plan also indicates that  
         the station intended to host the Awards in November and made numerous 
         references to the Tshivenda Music Awards.

[21]	Respondent states that during or around November 2011, after completion of 
         the plan but prior to any meeting with the applicant, the station originated the 
         trade mark TSHIMA.

C. OBJECTION IN LIMINE 

[22]	At the commencement of these proceedings the parties addressed me regarding 
         the objection in limine raised by the respondent, namely, the applicant does not 
          have the requisite locus standi to bring the application.

[23]	It is legally required for an applicant to establish that it is an “interested person” 
         for rectification of the Trade Mark registered under section 24,26, and 27 of the  
         Act.

[24]	The phrase “interested person” replaces what was previously referred to as “any 
          person aggrieved” in the previous Act, the Trade Marks Act 62 of 1963 (“The 
          1963 Act”).

[25]	In Ritz Hotel Ltd v Charles of the Ritz and Another (“Ritz Hotel”) persons 
          interested were described as 
25.1 All persons who are in same way or other substantially interested in having the mark removed from the register; including all persons who would be substantially damaged if the marked remained, and all trade rivals over whom an advantage was gained by a rival trader who was getting the benefit of a registered trade mark to which he was not entitled.   
25.2 All persons who have a genuine and legitimate competitive interest in the trade to which the offending market relates. Danco Clothing Pty Ltd v Nu-Care marketing Sales and Promotions Pty Ltd and Another (“ Danco Clothing.”) A trading interest which consists not of an actual trade but a genuine intention to trade, is sufficient to establish that a trader is interested. 

[26]	There is an intense contestation between the applicant and the respondent 
         regarding the attendance of meetings and why certain things were done. For  
         example, the applicant states that the respondent fails to provide any justifiable 
         reasons why Phalaphala FM having been established in 1965 only noticed in 
         2011 “that many Tshivenda language musicians were not enjoying the same 
         exposure and success”. The applicant contends that the respondent provides no 
         details as to why and exactly when there was a sudden realisation after so 
         many years that this was the case.  

[27]	The respondent on the other hand finds it strange that the applicant noticed the 
         absence of awards for Vhavenda people and Tshivenda music as this did not 
         fall within its business.

[28]	 In the founding affidavit the applicant avers that it creates and implements 
          marketing strategies for its own clients and provides planning, conceptualisation 
          and implementation of events. This, according to the respondent, was the 
          service that the applicant provided to others which made no reference to the 
          music industry. 

D. ANALYSIS 

[29]	 In determining the issue of locus standi of the applicant, I have had to keep in 
           mind the grounds on which the applicant bases its claim. The first one of those 
          grounds is that the applicant was the first to conceptualise the “Tshivenda Music  
           Awards” and that a presentation was made in this regard to the respondent’s 
           officials.
           The second ground is that the trademark as currently registered constitutes a 
            bar to the applicant’s attempt to register its own trademarks.
           Thirdly, the applicant claims that it has been using the marks since 2012 without 
           any licence from the respondent.
           Fourthly, the “Tshivenda Music Awards” and the “TSHIMA” trademarks are 
           incorrectly on the register of trademarks.
           Lastly the applicant is a potential rival of the respondent.

[30]	It is trite that in motion proceedings an applicant must make its case in its 
         founding affidavit. Ipso facto, it must simultaneously establish its locus 
        standi in the founding papers. What this means in this case is that an applicant 
        must specifically challenge each class of registration such as class 41, class 9 
         et cetera. The applicant in this case fails to do so.

[31]	If any class had been dealt with regarding the different classes of  
         registration in the founding papers, the applicant could potentially have 
         established locus standi. Counsel for the applicant tried to establish the 
         challenge through submissions from the bar regarding the classes sought to 
         be challenged. Such submissions cannot be used as a substitute for what ought 
         to have been deposed to in the founding affidavit.

[32]	The applicant also claims to be a potential rival of the respondent in that it has 
        previously used the marks without the permission of the respondent. Mere use 
        is not sufficient. An applicant must demonstrate through evidence that it had 
   .    established a reputation such that members of the public view those marks as 
       emanating from the applicant. The applicant does not present such evidence.

[33]	The weakest link in the application and which in my view is the most fatal to 
       applicant’s potential to establish locus standis is its failure to apply to register a 
       trade mark. If it had done so, the respondent would have been compelled to 
       raise an objection to the application, and such application and opposition by the 
       respondent would have unequivocally established the applicant’s locus standi.

[34]	Significantly, despite the applicant’s avowed interest and use of the marks, it has 
         failed to formally challenge the respondent’s registered trade mark from the year 
         2012 to date.

E. CONCLUSION 

[35]	 Even though the applicant refers to certain trade mark applications which it 
          claims to have filed, no copies of much applications are attached and no marks 
          are identified as being the subject of such applications.

[36]	Absent the facts on which the applicant relies on to establish its status as an 
        “interested person” in relation to any goods and services for which the  
           trademarks have been registered, the applicant lacks the necessary locus  
           standi in iudicio.
[37]	In the result I make the following order:
        The application is dismissed with costs which costs shall include the costs of 
        counsel.

__________________
SELBY BAQWA 
JUDGE OF THE HIGH COURT  
GAUTENG DIVISION, PRETORIA 

Date of hearing:   February 2022
Date of judgment:  February 2022
Appearance 
 On behalf of the Applicants                              Adv X Hilita
Instructed by                                                      Phukubje Pierce Masithela Attorneys
                                                                          Tel: 084 975 9908 / 011 290 4000
                                                                          Email: hilita@counsel.co.za

On behalf of the Respondents                          Adv F Southwood SC
Instructed by                                                     Norton Rose Fulbright Attorneys
                                         Tel: 082 940 1467
                                                                         Email: southwood@counsel.co.za