Trademark claim fails to gain traction with South African court

South Africa’s Supreme Court of Appeal has dealt car accessory company Etraction a double blow by rejecting its trademark infringement claim and ruling that its registered mark should be prevented from covering tyres.

In a decision issued last week, the court sided with rival company Tyrecor in their dispute concerning the word mark ‘Infinity’.

Etraction was granted a trademark for the word in 2009. It was registered to cover tyres and other car accessories.

The application was processed despite a company called Falck Trading having used the Infinity name since 2006 to sellr tyres that it had been importing to South Africa.

Falck Trading later became known as Tyrecor and continued selling tyres under the Infinity name in 2009.

In 2013, Etraction sued Tyrecor for trademark infringement.

Tyrecor counter sued, arguing that Etraction’s trademark was invalid because it had not actually sold tyres under the name.

The dispute was heard at the Western Cape High Court in Cape Town, which initially ruled in favour of Tyrecor, in 2014.

Etraction appealed against the judgment and the case was re-heard by the appeals court on May 20.

Judge Malcolm Wallis, presiding over the case, said on Thursday (May 28) that there was “no evidence at all that Etraction made use of the mark ‘Infinity’ [for tyres]”.

Wallis added that Tyrecor’s use of the mark was protected by section 36(1) of South Africa’s Trade Marks Act.

Under this law, a party is protected from an infringement claim if it can demonstrate continued use of a mark before another party’s trademark registration.

Wallis said Tyrecor had shown that it had “acquired a sufficient” reputation in South Africa to free it from being liable for using the word ‘Infinity’.

On the question of the trademark’s validity, Wallis questioned the intention behind Etraction’s registration. He said it was done simply to “stultify” Tyrecor’s business.

“There is not a jot or tittle of evidence to suggest that Etraction genuinely intended at any stage to trade in tyres under the ‘Infinity’ mark,” he concluded.

Wallis ordered Etraction’s registered trademark to be amended to cover vehicle components and accessories, but not tyres.

Law firms Brian Bacon and Hahn & Hahn, which represented Etraction and Tyrecor respectively, had not responded to a request for comment at the time of publication.