THE PRIOR USE DEFENCE IN SOUTH AFRICAN TRADE MARK LAW
THE PRIOR USE DEFENCE IN SOUTH AFRICAN TRADE MARK LAW*By Wim Alberts
Section 45 of the Trade Marks Act 62 of 1963 provided protection for the prior user of a trade mark against the infringement action of a registered proprietor. The Trade Marks Act 194 of 1993 maintains this position, but involves a more complex regime, as it deals with use in relation to the same or similar goods, use on any goods, and also, infringement of an unregistered mark. The manner in which these situations are regulated is discussed below.
2 Infringement in terms of section 34
2.1 General enabling provision
Section 36(1) states the following:
"Nothing in this Act shall allow the proprietor of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in respect of goods or services in relation to which that person or a predecessor in title of his has made continuous and bona fide use of that trade mark from a date anterior –
(a) to the use of the first-mentioned mark in relation to those goods or services by the proprietor or a predecessor in title of his; or
(b) to the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his,
whichever is the earlier, or to object (on such use being proved) to the trade mark of that person being registered in respect of those goods or services under section 14."
The use relied on must be substantial, according to Williams Ltd v Massey Ltd. In Concorde Trade Mark it was said that the concept "substantial" has to be considered in relation to the trade concerned. The use must also be continuous. It must be borne in mind in reviewing the provisions of the Act, that prior use will not only be relevant for defensive purposes. If there is substantial and continuous use, and the respective goods correlate, the prior user will be in a strong position to expunge the mark concerned. Everything will thus not necessarily rest on whether there is protection under the prior use provisions.
2.3 Infringement provisions
2.3.1 Section 34(1)(a)
The above section provides the following:
"The rights acquired by registration of a trade mark shall be infringed by –
(a) the unauthorized use in the course of trade in relation to goods or services in respect of which the trade mark is
registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;"
(i) Absolute priority
In the above context, the simplest situation in which section 36(1) can find application is the following. A commences use of his mark on wine in 2000. B obtains a registration for wine based on a 2001 filing date, and commences use in relation thereto in 2002. A can rely on section 36(1). If, in the former situation, B had not used his mark, the phrase "whichever is the earlier" would not come into play, but on general principles, A would, of course, still have priority. In the situation where A uses his mark in relation to wine by selling 100 bottles in 2000, and B later obtains a registration therefor based on a 2001 filing date, A will not be able to rely on section 36(1). This will be the conclusion if it is assumed that such use is not substantial.
(ii) Relative priority
The determination of the appropriate outcome is more complex where the goods concerned are not exactly the same, as per the following example. A commences use of his mark in relation to shoes in 2002. B obtains a registration for "clothing", based on a July 2003 filing date, and commences use of the mark in August 2003. In December 2003, A commences use of the mark in relation to socks. Can he rely on the earlier event of use in relation to shoes?
The answer to the above would be in the negative if regard is had to the decision in Everest (Long Eaton) Ltd v P. Camm, Ltd. Here the corresponding provision in the 1938 British Trade Marks Act was considered. A commenced use of a mark in the 1920s in relation to wicker and woven fibre chairs. B obtained a registration in 1932 in relation to upholstered chairs. A later commenced use of the mark in relation to upholstered chairs, more in particular, open arm upholstered fireside chairs. In rejecting A’s defence of prior use, the court found that:
"[T]he word ‘goods’ is used not as synonymous with the whole category which is specified in the registration, but is used to refer to the particular goods or species of goods in respect of which the Defendant proves user in fact."
In coming to this conclusion, the court had regard to evidence from the trade, which led it to the following conclusion:
"[F]rom the evidence the wicker and woven fibre type of armchairs, even though upholstery has been applied to it, is treated and has always been treated in the trade quite plainly as a distinct article; so that it does not suffice…to show user only in respect of that type of armchair, for such user would not be user in relation to upholstered chairs at all."
A’s later event of use could thus not be "tacked on" to its earlier use, in other words, the use on wicker and woven fibre chairs did not give him the right to (also) use the mark in relation to upholstered chairs. It thus appears that although the court used the phrase "species" of goods, its finding was made in relation to the specific goods on which B actually used his mark. No "line extension" was allowed. A restrictive approach was also followed in the later decision in Dreamland Trade Mark. Following the Everest case, the court rejected the prior use defence, as the goods concerned were not identical with any of the goods for which the opponent’s mark is registered, or in respect of which they have used their mark.
It falls outside the scope of this work to undertake an exhaustive review of case law dealing with the relation between apparently different goods in the context of other areas of trade mark law where different policy considerations could, of course, apply. A brief overview is nonetheless in order. Of interest, firstly, is the so-called "red caddy principle", as mentioned in Premier Brands UK Ltd v Typhoon Europe Ltd. where it was said that:
"One does not dig deeper and, as it were, narrow a particular category of item to reflect the extent of the goods to which the mark has been used. Thus, if the only "domestic…container" in connection with which the mark had been used was a red tea caddy, it seems to me that the registration should remain in respect of domestic containers; it should not be cut down to, for instance, containers for food, containers for tea, tea caddies, or red tea caddies…[A]s a matter of principle, it appears to me that one should take the registration as one finds it."
There is thus a possibility of wider protection, but whether this approach would have been of assistance to A in the Everest case, so as to be able to cross the divide between the two types of chairs, is unclear. Secondly, brief reference can be made to a number of English cases dealing with the issue of non-use. In the decision in Kodiak Trade Mark, the court stated, obiter, the following:
"Applying that it seems to me that T-shirts are not goods of the same description as footwear. The critical matters would be that although some footwear is sold in the same departments and in the same stores or parts of the store at which some T-shirts are sold, the great bulk of both items are sold separately."
Other cases dealing with non-use are also instructive. In Cepravin, the specification of a mark used only in relation to two veterinary medicine products was reduced from "pharmaceutical and veterinary preparations and substances" to "antibiotic preparations for use in veterinary treatments." In Academy the mark was registered for articles of clothing. The evidence related to use on leisurewear. The specification was amended by the exclusion of footwear. In Re Zamoyski Trade Mark, the mark was registered in relation to "wines, spirits, and liqueurs", but used in relation to vodka. The specification was restricted to the latter. In Club Soda, the registrations covered "non-alcoholic drinks and preparations for making such drinks," but were used only for non-alcoholic drinks. They were expunged for preparations for making such drinks. Also, a registration for "beverages containing not more than 2% (by volume) of alcohol" was partially expunged, by limiting the specification to non-alcoholic beverages. These cases can be characterised as being strict in so far as the scope of protection that is retained is concerned.
Morcom summarises the position as follows:
"In the absence of decisions of the court on these questions of partial rectification, or any clear rulings from the registry, the present position is somewhat unclear. It is submitted that a proprietor ought, in general, as a matter of principle, to be allowed to retain a registration for a broader description of goods or services than his specific product or products. For example, in the Zamoyski case, there might well have been some justification in allowing the registration to remain for "spirits" and not just "vodka"; in the Cepravin case although it was right to revoke the registration for pharmaceutical preparations and substances, there might have been an argument in favour of retention for veterinary preparations generally. However each case must be judged on its own merits having regard to all the circumstances, including the nature of the goods and services concerned and of the trade mark, and any particular factors relating to the trade in such goods or services."
If the above authors’ view is applied to the issue under discussion, it could imply the following. A uses his mark in relation to vodka in 2002. B obtains registration for "wines, spirits and liqueurs" based on a 2003 filing date. A commences use in 2004 in relation to whisky. A broad interpretation of section 36(1) would provide A with protection. It must be re-iterated that A would, of course, have the option in appropriate circumstances to expunge B’s mark.
Of relevance are also the views of Kerly. The writer states the following:
"If the Court or Registry decides that there has been genuine use but only on a particular item or in relation to a particular service, the first question is whether the specification extends unduly beyond the item or service? If so, the enquiry is this: how would the notional reasonable man describe that item? Naturally, the answer depends on all the circumstances, but the answer provides the wording appropriate for that item in the specification of goods."
The decision in Thomson Holidays Ltd v Norwegian Cruise Lines Ltd also emphasized the role of the perception of the consumer. The following was stated:
"In my view that task [deciding on scope of rectification] should be carried out so as to limit the specification so that it reflects the circumstances of the particular trade and the way that the public would perceive the use. The court, when deciding whether there is confusion under s. 10(2), adopts the attitude of the average reasonably informed consumer of the products. If the test of infringement is to be applied by the court having adopted the attitude of such a person, then I believe it appropriate that the court should do the same when deciding what is the fair way to describe the use that a proprietor has made of his mark. Thus, the court should inform itself of the nature of the trade and then decide how the notional consumer would describe such use."
With regard to South African law, the authors Webster and Page comment as follows on the Everest case:
"It is, with respect, a little difficult to understand what precisely is implied in the phrase, employed by Evershed MR ‘particular goods or species of goods.’ The question would appear to turn on whether or not the goods (or services) are, in trade circles, regarded as constituting a separate and distinct category. The question is of considerable practical importance in determining the precise scope of the rights of the person claiming prior use. His rights would apparently not be limited to the actual goods (or services) in respect of which user has been established but would be extended to cover the ‘species’ or category of goods (or services) within which the actual goods or services fall."
The decision in Arjo Wiggins Ltd v Idem (Pty) Ltd, which dealt with an expungement application, referred to some guidelines which are of value. The proprietor wished to rely on use of its mark in relation to carbonless copying paper to defend a registration for "paper and paper articles." The court indicated that the important or "anterior" question is in relation to what expungible category of goods non-use has been shown, and then stated the following:
"Unless, therefore, it is evident to the Court (or the applicant lays a foundation suggesting) that the expungement sought describes a commercially coherent category of goods within the existing specification, the relief the applicant seeks cannot be granted if the proprietor has proved relevant use within the category. That is the position in the present case, where, in sum, the proprietor proved relevant use of its trade mark within a protected category and there is nothing to show that sustaining its registration in respect of that category would not make commercial sense."
Applying this dictum to the problem of the prior use defence, it would seem to imply that if A uses his mark on carbonless copying paper, he could later extend his use to other goods within the same category, such as other types of paper, and would not infringe a registration of B for "paper and paper articles." Reference can also be made to the view of the authors Webster and Page that insofar as a partial expungement is concerned, the court should permit the retention of a specification, not only for the goods on which the mark was used, but also that of a "wider description." Having regard to all of the above, it seems that there is some support for the approach of granting protection wider than the goods in relation to which the mark was actually used. The exact delineation of when this would be possible is not a simple matter, however. Moreover, a close reading of the Everest and Arjo Wiggins cases indicates that the application of the apparent "generous" principle rather evidences a relatively strict approach. It appears that the matter is, at the end of the day, a factual question, and the process of interpreting the scope of the specifications of a registration could be of a fairly technical nature. The criterion would not simply be one of degree. Instead, it appears that the nature of the goods and the perspective of persons within the particular trade, as well as that of consumers, are of importance. It is submitted that the test proposed by Kerly will be of value in the application of these considerations in a given instance.
To return to the question posed in the beginning, it seems arguable that insofar as shoes and socks are concerned, people within the clothing industry, the retail trade, and consumers, would consider both of them to be included under the description of "clothing." The approach adopted in the Kodiak Trade Mark case would not support this view, however, decisions such as that in Danco Clothing v Nu-Care Marketing Sales and Promotions would. There the court held the following:
"Having regard to the evidence relating to the nature of the goods (the appellant’s clothing and the respondent’s cosmetics), their respective use, and the trade channels through which the appellant’s and the respondent’s goods can notionally be retailed, the likelihood of confusion amongst a substantial number of persons has, in my opinion, been established on the probabilities."
(b) Section 34(1)(b)
The above section provides the following:
"The rights acquired by registration of a trade mark shall be infringed by –…
(b) the unauthorized use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion;"
In contrast to the situation encountered under section 34(1)(a), the above provision extends to goods not contained in the registered mark’s specifications. This could imply that not only must prior use of a mark on goods included in the specifications be established, but also in relation to goods similar to that in the actual specifications. Prior use on goods included in the actual specifications would thus not be sufficient. To take an example. A registers a mark in relation to goods in class 3 in July 2000, and commences use of its mark in relation to goods in class 25 in January 2002. B commences use in relation to goods in class 25 in April 2001. On the basis of protection for similar goods, July 2000 can be seen as the relevant date for determining A’s rights in relation to goods in class 25. On the other hand, A does not have a registration in class 25, and January 2002, the date of actual user, postdates B’s date of first user insofar as goods in class 25 is concerned. As A’s protection extends to similar goods, it is arguable that B cannot rely on section 36(1). He would have to prove user prior to A’s date of application in relation to goods in class 3. The alternative view is, of course, that use by B prior to the earliest event (use or registration) on A’s side, in relation to goods in class 25, is sufficient.
Weighing the different considerations is not a simple task. An element of unfairness can be perceived in excluding protection for B, if his use is prior to the use or registration by A in relation to the goods concerned. The fact remains, however, that at the time that B commenced use, such use was, strictly speaking, infringing use. Kitchin and Mellor state the following on the English law:
"Thirdly, the use must be anterior to the earlier of the use of the registered mark in relation to or the registration of that mark in respect of those goods or services by the proprietor or a predecessor of his. Now [under the 1994 Act] it is of course possible to sue in respect of the use of a mark in relation to goods or services other than those in respect of which it is registered. So it is quite possible that the registered mark has neither been registered in respect of the goods or services in relation to which it is being used by the infringer nor used in relation to those goods or services by the proprietor or any predecessor."
The possibility that must thus be considered is whether B is not perhaps the type of user that the Act actually intended to target. In other words, the necessary implication of the wording of section 34(1)(b) is that the broadened protection is valid as of the earliest of the event of use or registration. Allowing a prior use defence would otherwise render nugatory the effect of section 34(1)(b). The legal position is thus seemingly that a quite broad principle of priority has been introduced by the legislature, namely that use by B must predate the full scope of the rights of A. Put differently, B must use his mark prior to the earliest of the event of use or registration by A of a mark not only in relation to the same but also similar goods.
The above notwithstanding, the approach suggested may be seen to produce some inequities. The solution to the problem sketched above may, initially, seem to lie in the reference in section 36(1) to registration on the basis of honest concurrent use, but this reference also presupposes priority of use. The remaining alternative for B is to rely on section 14(1) as a general provision. There are, of course, a number of relevant factors that must then be considered, including the question of duration and extent of use. These requirements would ensure that an "infringer" does not escape liability merely by relying on honest concurrent use. In any event, the proprietor would be able to oppose such an application, and challenge all evidence submitted to establish the relevant requirements.
In contrast, in the case of the prior user that relies on honest concurrent use, section 36(1) states that nothing in the Act shall be interpreted to allow the proprietor (on such use being proved) to object to registration in terms of section 14(1). The proprietor would thus seemingly be able to challenge only the veracity of a claim to prior use by the applicant. The prior user would, of course, often apply for the expungement of a registration on the basis of his prior rights, in terms of section 10(12) read with section 24(1).
(c) Section 34(1)(c)
The above section provides the following:
"The rights acquired by registration of a trade mark shall be infringed by –…
(c) the unauthorized use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trade mark registered, if such trade mark is well-known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of deception or confusion…"
This provision envisages a situation where, for example, A uses XYX, a mark well-known in relation to beverages, since 1990. Registration of the mark in relation to said goods is obtained in 2000. Although the use of the mark is limited to beverages, it has become widely known in commerce, and its fame extends to several established classes of goods and services. B commences use of XYX in January 2004 in relation to watches, a type of article to which, for argument’s sake, the fame of the XYX mark already extends. B’s date of first use predates that of A’s use or registration in relation to watches. However, on the date concerned, A’s mark already had a presence (reputation) insofar as class 14 is concerned. On the other hand, where the XYX mark is used by B in relation to artificial limbs, it can be argued that as the fame of the mark does not extend to class 10, B’s use does not amount, to infringement, a priori, and the issue of prior use as such does not feature then. It becomes apparent that this situation involves a somewhat forced application of section 36(1).
3 Famous marks in terms of the Paris Convention
3.1 Enabling provision
Section 36(2) of the Act provides that:
"Nothing in this Act shall allow the proprietor of a trade mark entitled to protection of such trade mark under the Paris Convention as a well-known trade mark, to interfere with or restrain the use by any person of a trade mark which constitutes, or the essential parts of which constitute, a reproduction, imitation or translation of the well-known trade mark in relation to goods or services in respect of which that person or a predecessor in title of his has made continuous and bone fide use of the trade mark from a date anterior to 31 August 1991 or the date on which the trade mark of the proprietor has become entitled, in the Republic, to protection under the Paris Convention, whichever is the later, or to object (on such use being proved) to the trade mark of that person being registered in relation to those goods or services under section 14."
3.2 Infringement provision
Section 35(3) reads as follows:
"The proprietor of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark is entitled to restrain the use in the Republic of a trade mark that constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of the well-known trade mark in relation to goods or services which are identical or similar to the goods or services in respect of which the trade mark is well-known and where the use is likely to cause deception or confusion."
The situation envisaged by section 36(2) is, for instance, where the mark of A, a German business, becomes entitled to protection in terms of the Paris Convention in South Africa in 2004. In terms of the section, this date must be contrasted with the date of 31 August 1991. B commences use of the mark in 2002. The later of the former dates is, of course, 2004. B can rely on section 36(2). The section makes reference to section 14 in relation to such prior use. What is, however, the position where a well-known mark is adopted after it has become well-known in South Africa? It is submitted that section 36(2) is but an example of where a registration on the basis of honest concurrent use can be obtained. In other words, the general import of section 14(1) would still be applicable. This would be in line with the position where an ordinary mark is used after registration, in which case section 14(1), read with section 10(14), would still apply.
In McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Limited it was contended that use of the mark concerned was permitted by section 36(2) of the Act. The court stated that the question was whether the party concerned and its predecessors in title have used the mark continuously and bona fide. The court referred to the decision in Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk. That matter dealt with the question of bona fide user as related to the issue of non-use. The following was said:
"… [B]ona fide" must be given some effective meaning. In my view it cannot be confined to meaning merely real or genuine as opposed to fictitious or simulated, or honest as contrasted with dishonest, because it is difficult to conceive how a user, in the sense of the exercise of a right, can be said to be fictitious, simulated or dishonest, and in any event, a fictitious, simulated or dishonest user would not in law be a user at all, and the addition of the qualification "bona fide" would therefore have been totally unnecessary. The words were obviously inserted to give a particular quality to the user which it was intended should defeat an aggrieved person’s application…The expression obviously relates to the proprietor’s state of mind in using his trade mark and therefore his object or intention in using it…Now the system of registering trade marks is designed to protect, facilitate and further the trading in the particular goods in respect of which the trade mark is registered. The very name, "trade mark" denotes that, and the definition thereof in sec. 96 of the Act confirms it. I would therefore say that "bona fide user" in sec. 136 means a user by the proprietor of his registered trade mark in connection with the particular goods in respect of which it is registered with the object or intention primarily of protecting, facilitating, and furthering his trading in such goods, and not for some other, ulterior object".
On appeal it was said that although it would not be attempted to provide a comprehensive definition of what the expression "no bona fide user" meant, the following can be stated:
"Whatever the full meaning of the phrase may be, it seems clear that user for an ulterior purpose, unassociated with a genuine intention of pursuing the object for which the Act allows the registration of a trade mark and protect its use, cannot pass as a bona fide user."
In the McDonald’s decision the court applied the above principles to the facts. Mention was made of the fact that the one party was interdicted from the use of the mark, and then bought a business with a similar name in Durban. In rejecting the defence, the court said that the purpose of the acquisition of the business was not to distinguish the business from that of others, but the converse, namely to use a mark confusingly similar to that of the appellant. This principle is referred to below as the "McDonald’s rule."
The question that arises is when a transaction will fall foul of this rule? Transactions where large multinational companies purchase whole businesses, including their trade marks, or purchase only a particular trade mark are entered into on a regular basis. To a large extent the premium paid will relate to the value of the trade mark concerned. The objective will clearly be to obtain such rights as the seller may have. These rights can include, in particular, rights established through the use of the mark concerned. It would seem acceptable that such prior rights are purchased, and transactions of this nature will rarely be in conflict with the McDonald’s rule. The above issue can be discussed further having regard to a number of scenarios. A has been using its mark since 2003, and wishes to take steps to prevent the use of B, a competitor, who has been using the mark since 2002. C has a registration for the mark, obtained in 2001. C is no longer using the mark, and agrees to sell it to A. A would have an "offensive" objective, namely to prevent the use of B, and this would appear to be a lawful transaction. To adapt the facts slightly, C decides to prevent the use of both A and B, and recommences use of his mark in order to prevent an expungement attack on the basis of non-use. In such an instance both an "offensive" and "defensive" objective would be present. In the Rembrandt ruling, sporadic use of a mark, inter alia, to protect a registration, was held not to be bona fide. The decision in Electrolux Ltd v Electrix Ltd is, however, to the effect that the commencement of use of a mark specifically for the purpose of protecting the registration against expungement, so as to institute infringement proceedings based thereon, is bona fide use.
The issue that must be considered then is whether, in a purely "defensive" context, the answer would be different. For example, X, wishing to commence use of a mark, but being apprehensive of Y’s registered rights, purchases Z’s business, which has been trading for ten years, and which co-exists with that of Y. X clearly has the intention of avoiding liability, but it can be argued that, simultaneously, he has the objective of securing the right to use Z’s mark, and, in fact, to use it to distinguish his [X’s] products, which would seem to comply with the McDonald’s rule. The latter seems to be predicated upon the approach that, in the above example, X acquired the mark or business with the aim of, in effect, passing off his business as that of Y. However, if, ex hypothesi, Z has not been guilty of such a misrepresentation during his ten years of use, it would seem to follow that so also will X not be guilty. In other words, the acquisition of such rights will cause X to simply step into the shoes of Z. It would seem that the objective of the transaction would indeed be "to protect, facilitate and further the trading in the particular goods" concerned.
It can be accepted that, as was for instance said in the Gerber Trade Marks case, that whether a particular action is a pretence depends on the intention or motive of the person concerned. It thus appears that the principle is that the motive is important, and that if a court finds that an intention to pass off exists, the use, or rather the agreement ostensibly allowing X to obtain Z’s rights, to be able to rely thereon as a defence against Y, would not be bona fide. As was attempted to illustrate above, the application of this principle is not a simple task. Be that as it may, this is what the McDonald’s rule apparently entails, and it cannot be controverted that it is in line with general principles of unlawful competition which attaches considerable importance to the motive of a competitor. If the particular factual circumstances found in the McDonald’s case are present, then obviously the use will not be bona fide, and liability will follow. The matter thus seems to rest upon the facts of each case.
The court mentioned that the issue of bona fides in the conclusion of the contract was also raised in argument, but in view of its above ruling on the lack of bona fide user, it was not considered necessary to deal therewith.
In summary, in terms of section 34(1)(a), it was proposed that the protection for the prior user should be somewhat wider than merely the goods on which use has been made. With regard to section 34(1)(b), it was suggested that it would be necessary for a user to prove priority in relation to both the same and similar goods to that contained in the proprietor’s specifications. Insofar as section 34(1)(c) is concerned, the position is that use prior to the use or registration of a mark in relation to particular goods are not decisive, the matter would depend on the extent of the fame of the proprietor’s mark. However, the effect of section 36(1) in this regard is not clear. The Act makes specific provision for prior user rights in relation to marks entitled to protection under the Paris Convention. With regard to protection based on the acquisition of the rights of a prior user, it would seem that there is some uncertainty. It was suggested that each case would have to be decided on its own merits.
DIE VERWEER VAN VOORTYDIGE GEBRUIK IN DIE SUID-AFRIKAANSE HANDELSMERKEREG
Hierdie bydrae handel met die verweer wat in terme van die Wet op Handelsmerke 194 van 1993 aan ‘n voortydige gebruiker van ‘n handelsmerk gegee word. Die algemene bepaling is artikel 36(1). Ingevolge die bepaling moet, ten einde van die verweer gebruik te kan maak, ‘n persoon ‘n merk gebruik het voor die datum van registrasie, of die datum van eerste gebruik van die geregistreerde eienaar, wat ookal eerste plaasgevind het. Die verweer sal uiteraard net ter sprake kom indien die voortydige gebruiker nie die registrasie aanval nie. In gevalle waar daar absolute prioriteit bestaan, sal die merk op identiese goedere gebruik wees. Die situasie waar die gebruik met betrekking tot goedere wat ietwat verskil was, is meer kompleks. Regspraak het die beginsel van ‘n wyer toepassing van die beginsel aanvaar, maar die praktiese toepassing was eng gewees. Daar was aan die hand gedoen dat die verweer moeilik toepassing vind in die geval van welbekende merke. In die geval waar merke soos bedoel in artikel 6bis van die Parys Konvensie ter sprake kom, is artikel 36(2) ter sprake. Hier is die vereiste dat die merk gebruik moes word voor die betrokke statutêre datum, of die datum waarop die merk vir beskerming gekwalifiseer het, wat ookal die laatste is.