Primark clothing could be on its way to South Africa.
But the European retail giant is not planning an African expansion to bolster its 350 stores in 12 countries.
Instead it is Truworths that wants to use the Primark brand locally‚ and on Wednesday the Supreme Court of Appeal declared it the victor in a preliminary skirmish with the Irish-based chain.
Overturning a Pretoria high court ruling‚ five judges granted Truworths’ application to have Primark expunged from the trademark register.
The judgment opens the way for Truworths to apply for its own registration of the Primark trademark‚ and the appeal court said it probably wanted to do so to prevent the chain entering the South African market as a “potentially dangerous rival”.
Primark registered its trademark in SA and several other countries in 1976‚ but its attempt to show it had been used in the country in the past five years was “tenuous in the extreme”‚ said Judge Malcolm Wallis.
“It consisted firstly of a single pair of ladies’ silk palazzo pants on a South African website describing itself as an online marketplace‚” said Wallis. The retailer also said a US website advertised Primark clothing with prices quoted in rands.
Although it succeeded in having Primark’s trademark expunged‚ Truworths did not emerge from the appeal court with its reputation unsullied.
“A disquieting feature of this case is that Truworths has never disclosed its reasons for wishing to register the Primark mark‚” said Wallis.
“It was extremely coy about its knowledge of Primark’s business and the use to which it intended to put the mark‚ saying only that it intended to use it on clothing.
“The original application said disingenuously that‚ other than knowing the location of Primark’s head office in Dublin‚ Truworths had ‘no further information’ on the nature of its business.”
In a concurring judgment‚ Judge Nigel Willis said the case proved the concept of “territorial isolation” for brands was past its sell-by date.
“The osmotic power of ideas and indeed images has intensified immensely in recent decades‚” he said‚ pointing to the influence of television‚ the internet and mass air travel.
“In the twinkling of an eye‚ a brand or label now well known in South Africa can become embedded in the consciousness of people living here.
“If the principle of territoriality in relation to trademarks is to be revisited‚ in the light of changing social milieux‚ this will require an internationally concerted political effort and considerable political will.”