SCA's precedent-setting ruling on generic term
Ackermans was recently successful in what Werksmans Attorneys’ Janine Hollesen calls a precedent-setting trademark dispute with Truworths (Pepkor Retail (Pty) Ltd v Truworths Ltd) which was heard by the SCA. In an analysis in The Star, Hollesen notes that the trademark at the centre of the dispute was ‘The Look’.
Truworths was the owner of trademark registrations for ‘The Look’ in relation to various goods and services, including clothing. Ackermans adopted and used the catchphrase ‘The Look For Less’, which it used in relation to the promotion and marketing of the Ackermans brand. Relying on ‘The Look’ registrations, Truworths sued Ackermans for trademark infringement, alleging that its use of ‘The Look For Less’ infringed ‘The Look’ trademark registrations.
As part of its defence, Ackermans filed a counter-application for the cancellation of the Truworths’ ‘The Look’ trademark registrations on the basis that the mark should never have been registered in the first place as it did not qualify as a trademark.
Relying on sections 10(1) and 10(2) of the Trade Marks Act, Ackermans attacked ‘The Look’ registrations on the basis that the mark was not capable of distinguishing and that the term had a common meaning in the trade. Hollesen adds the court reached the ‘ineluctable’ conclusion that in the fashion retail industry, the term ‘the look’ carries the universal ordinary meaning of fashionable or trendy clothes or outfits. It was found that ‘the look’ was not inherently distinctive and – being a phrase with a generic descriptive meaning in general use in the industry – it should be struck from the register. The court therefore ruled that Truworths cannot monopolise the words ‘the look’.
Article disclaimer: While we have made every effort to ensure the accuracy of this article, it is not intended to provide final legal advice as facts and situations will differ from case to case, and therefore specific legal advice should be sought with a lawyer.
