Supreme Court of Appeal to hear GAP appeal

The latest chapter in the increasingly acrimonious legal battle between Gap Inc and Kingsgate Clothing (formerly the AM Moolla Group) has now reached the Supreme Court of Appeal. This may well be the final chapter in the battle between Gap and Kingsgate over the proprietorship of the trademark GAP in South Africa.

The first chapter in this battle started eight years ago and came to an end with the 2005 Supreme Court of Appeal judgment of AM Moolla Group Ltd v Gap Inc (2005 (6) SA 568). The salient points of argument in this case revolved around AM Moolla's registered trademarks for the word GAP. Gap sought to expunge these trademarks and have its GAP trademark recognized as a well known mark in South Africa. Status as a well known trademark would have given Gap rights in the mark, regardless of the fact that it owned no registrations for or made no use of the GAP trademark in South Africa.

The Supreme Court of Appeal decided that the trademarks should be expunged on the grounds of lack of evidence of use. However, the court also found that Gap's now well-known GAP trademark was not entitled to protection against AM Moolla's use of the GAP mark, as this use dated back to the 1970s, when Gap's mark was not yet well known in South Africa.

The second chapter in the battle started when Gap announced that it would be selling GAP-branded clothing in conjunction with Stuttafords, a major South African retailer of designer merchandise. This action led to Kingsgate applying for and, in terms of a rather surprising judgment, being granted an interdict based on its alleged common law rights to the trademark GAP.

This decision has now been appealed to the Supreme Court of Appeal. At issue is Kingsgate's assertion that it has common law rights in the trademark GAP. Considering that the court has previously ordered that Kingsgate's marks be expunged for lack of evidence of use, the outcome of the appeal is awaited with interest.

Gerard du Toit, Spoor & Fisher, Pretoria