Expungement: The procedure
The application for expungement can be lodged either with the Registrar or with the High Court. The procedure is virtually identical to that in opposition proceedings.
In civil court cases, often, things are not clear-cut. For example, was the driver of the car looking at his cell phone at the time of the crash? Did the security guard shoot the bystander by accident? Is the trade mark confusingly similar? The way the judge decides these things is on ‘a balance of probabilities’. This means: measuring, taking into account the facts, what is more likely? This is why you sometimes see pictures of Lady Justice and her scales — where does the balance lie?
In court cases, if you allege something you must prove it. If I do not prove that you drove over my foot at the shopping centre, then I will fail in my case to have you held liable for the medical expenses and to compensate me for the pain and suffering. As lawyers say, I have not ‘discharged the onus’. (Onus comes from the same word in Latin, meaning burden — hence our English word onerous.) Normally, the person who is the claimant has the burden of proving, on a balance of probabilities, all the facts necessary to establish his claim.
When it comes to the removal of a trade mark based on non-use, the onus of proving that the trade mark has indeed been used is the other way round. The registered proprietor, not the person who alleges that it has not been used, must prove that it has used the trade mark.
Read section 27(3) of the Trade Marks Act.
New Balance’s trade mark registration P-F FLYERS was expunged because the Court held that its evidence was not good enough to prove sales of footwear bearing that trade mark in South Africa.
Some defences can be raised if you have not used your trade mark. It is advisable to consult an expert trade mark lawyer if you are in this position.