The Appellate Division of the Supreme Court of South Africa recently held that the registration and use of a trademark in a foreign country, however well-known it may be in that country, will not alone prevent another party from registering the same mark in South Africa.

In this case, a South African company which owned a chain of stores applied for registration of the trademark VICTORIA'S SECRET in several classes, including the clothing class, after discovering the popularity of the same mark for ladies' intimate apparel in the United States. The proprietor of the VICTORIA'S SECRET mark in the United States had no registration or use of this mark in South Africa and, although it subsequently filed applications in South Africa, it did so only after the South African applicant had filed its applications and had begun using the mark in South Africa. The Assistant Registrar of Trademarks allowed the South African company's applications and rejected those filed by the United States company. In a direct appeal to the Appellate Division of the Supreme Court, the Assistant Registrar's decision was upheld.

The proprietor of the mark in the United States was unable to prove that the trademark VICTORIA'S SECRET was well-known in South Africa before the South African applicant had filed and commenced use in that country. The evidence did not show that there was any knowledge of the VICTORIA'S SECRET mark in South Africa or that United States magazines with advertisements featuring the mark had circulated in South Africa prior to the filing of the applications by the South African applicant.

This case reaffirms the principle that foreign owners of unregistered trademarks cannot, in the absence of use, rely on the reputation that their marks may enjoy in their home countries to assert rights of ownership in a mark in South Africa; rather they must show that the mark is in use in South Africa or that the South African public has come to associate the mark with the foreign owner.