In essence, it’s a trademark battle

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Published Jun 8, 2015

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Pretoria - Upmarket jewellery outlet Pandora and clothing giant Truworths were embroiled in a legal tussle in the high court in Pretoria over the Essence trademark.

Pandora wanted to take over the trademark, insisting that, although Truworths held it, it had fallen into disuse by this chain.

Pandora lodged an application to expunge the Essence trademark from the trademarks’ register for its own use.

Registered in Denmark, Pandora said it had designed and manufactured its jewellery collection since 1982 and its jewellery was sold in more than 70 countries across the globe, including in South Africa.

Truworths, on the other hand, is one of South Africa’s leading fashion outlets with more than 600 stores, selling a wide range of items, including clothing and jewellery.

It has held the Essence trademark for the past 23 years.

But Pandora claimed in court documents that Truworths, however, no longer used Essence in relation to their trading.

In terms of the Trademarks Act, a person or company may apply for the trademark to be removed from the register if the trademark owner, among others, has not used the name for up to three months before an application is launched.

According to counsel acting for Pandora, they had conducted internet searches regarding the name to establish whether Truworths was still using it.

Truworths stated that the Essence range fell under its formal range and it could be found in selected stores.

This brand has been used with regard to ladies formal wear.

It emerged that, during a visit by the parties to an outlet at the Cresta shopping centre, it was found that the brand appeared on a range of clothing, but not on jewellery.

Truworths, however, said it had used this name for 23 years and many of its garments forming part of this range were clothing with a jewellery-type appearance.

The jewellery was attached to some of the clothing and it could be detached from the garment and worn separately as a distinct and independent item.

The court was shown a white shirt with a detaching necklace. Judge Dawie Fourie said this appeared to be an item of jewellery which could be worn separately. According to a stock sheet from the shop it recently sold 305 of these garments.

Pandora’s counsel argued that Truworths had not demonstrated that it used this trademark in relation to any commercially coherent category and that it was definitely not used as jewellery, for which use it was registered.

Truworths said that, while it did not use the trademark exclusively for jewellery, it was using it in relation to its clothing as the jewellery formed part of the garments.

Turning down Pandora’s application, Judge Fourie said jewellery, such as a necklace, was covered by the trademark held by Truworths and the clothing chain was indeed still using it.

Pretoria News

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