SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
• a person with a genuine intention to trade; and • a competitor whose field of business is nar - rowed owing to the registered trade mark. Furthermore, the basis of the cancellation appli - cation should fall within one of the categories outlined in 5.2 Legal Grounds for Filing an Opposition or Cancellation . 5.4 Opposition or Revocation/ Cancellation Procedure The opposition/cancellation procedure is pro - vided for in Regulation 19 of the Trade Mark Regulations and is as follows. • An opposition/cancellation must be brought on notice of opposition/cancellation sup - ported by an affidavit outlining the facts upon which the applicant relies for relief. • A copy of the notice and all accompanying annexures is served on every interested party. • The notice will include the applicant’s address for service at which they will accept notice and service of all documents in the pro - ceedings. This notice will set forth a day not less than one month after service of it on the respondent, on which the respondent is required to notify the applicant and the Registrar whether they intend to defend the application. • If the respondent does not notify the appli - cant of the applicant’s intention to defend the application, it will be set down for hearing on a date not less than ten days after expiry of the above-mentioned one-month period. • If the respondent notifies the applicant of their intention to defend the application, the respondent must submit their answering affidavit to the applicant within two months of the notification of their intention to defend.
• The applicant must then submit their reply - ing affidavit within one month of receiving the respondent’s answering affidavit. • The matter is then set down for hearing before the Registrar. • (Note: the Registrar is entitled to refer any opposition to the High Court to be heard and it has become custom for opposed trade mark opposition to be referred to the High Court for hearing. The High Court’s rules, regulation and practice directive will become applicable once the opposition has been referred to the High Court for hearing.) Oppositions are resolved through motion pro - ceedings. Cancellation/revocation proceedings may be brought before the Registrar or before a civil court. It is possible to partially cancel a trade mark reg - istration. This occurs where a registered trade mark has been used in relation to some of the goods/services covered in the specification but not in relation to others – in such an instance, only the goods/services in relation to which the mark is not being used will be removed from the specification. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Any person who is aggrieved by a decision or order of the Registrar may appeal to the Gauteng Division of the High Court, Pretoria for relief. This court will have the power to consider the merits of the given matter, to receive further evidence, and to make any order it deems fit. If the appeal is by a party to opposed proceedings, no further evidence may be submitted to the court, as it is merely a re-hearing on the merits limited to the
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