## Facts

- Victoria’s Secret Inc. (a Delaware corporation) owned and used “Victoria’s Secret” trademarks extensively in the United States, but did not prove a reputation for the mark in South Africa at the relevant time.
- Edgars Stores Ltd. (a South African retailer) independently adopted “Victoria’s Secret” for local trade and filed South African applications first:
  - Class 25 (clothing) in February 1986
  - Class 3 (cosmetics) in August 1986
  - Class 42 (services) in June 1987
- Victoria’s Secret Inc. filed later South African applications in September 1987 for the same mark in the same classes.
- The marks sought by the parties were substantially identical, creating a likelihood of deception or confusion if both were registered.
- Under the Trade Marks Act 62 of 1963, the registrar invoked the procedure for competing applications and required a determination of the parties’ rights.
- The assistant registrar allowed Edgars’s three applications to proceed to registration (subject to a disclaimer of “secret” and association of the marks) and refused Victoria’s Secret Inc.’s applications.
- Victoria’s Secret Inc. appealed directly to the Appellate Division.

## Issues

1. Who, for purposes of South African registration, was the “proprietor” of the mark “Victoria’s Secret” under the Trade Marks Act 62 of 1963 when one party had foreign use/registrations but no local reputation and the other had first local adoption and filing?
2. Whether extensive foreign registration and use of a mark, without a South African reputation at the critical time, prevents a local trader from adopting and registering the mark in South Africa.
3. Whether the registrar correctly determined rights between competing, confusingly similar applications and properly allowed one set to proceed while refusing the other.

## Decision

- The Appellate Division dismissed the appeal and confirmed the assistant registrar’s ruling.
- Edgars’s applications in classes 3, 25, and 42 were permitted to proceed to registration, subject to the required disclaimer and association.
- Victoria’s Secret Inc.’s competing applications in those classes were refused.
- The court held that foreign registration and even extensive foreign use, by itself, did not bar adoption and registration of the same mark by another person in South Africa.

## Legal Principles

- Trademark rights for registration purposes are territorial; foreign registrations and foreign use do not, without more, confer proprietary rights in South Africa.
- Under the Trade Marks Act 62 of 1963, “proprietorship” of a mark in South Africa generally lies with the party that first bona fide adopts and uses the mark locally, or has a genuine and definite intention to use it locally, in relation to the relevant goods or services.
- In competing-application proceedings involving substantially identical marks likely to cause confusion, the registrar determines which applicant has the superior claim to proprietorship and may accept that application while refusing the other.
- Absent proof of a South African reputation at the relevant time, a foreign trader’s overseas goodwill does not alone defeat a local trader’s good-faith appropriation and priority in South Africa.

## Conclusion

The court confirmed that, where a foreign mark lacked a South African reputation at the critical time, a local trader who first bona fide adopted and sought registration of an identical mark in South Africa could be recognized as proprietor for registration purposes, and the foreign applicant’s later competing applications could properly be refused to prevent confusion.


Victoria’s Secret Inc. v. Edgars Stores Ltd., [1994] ZASCA 43 (S. Afr. App. Div. 1994)