South Africa: Donald Trump And Bad Faith

Last Updated: 16 May 2019
Article by Rowan Forster

Most Read Contributor in South Africa, July 2019

Donald Trump comes up in our articles from time to time, as does the issue of bad faith. Both come up in this one.

In a recent case in the UK, a company called Trump International, which is owned by a German by the name of Michael Gleissner, filed applications to register the trade mark Trump TV in the communications and entertainment categories (classes 38 and 41). The US President, via a rights management company, opposed these applications. There were various grounds of opposition, but the most important one was the claim that the applications had been filed in bad faith.

The UK Registry, UKIPO, upheld the opposition. The hearing officer said that the intention behind the filings had clearly been to profit from Donald Trump's notoriety. The hearing officer further noted that the applicant had a history of abusive applications. The case went on appeal and the High Court upheld the hearing officer's decision. The judge felt that the bad faith was obvious. The judge said that a very clear explanation was required as to why these trade marks had been filed. The judge further said that the hearing officer had been within his rights to consider the company's past conduct.

The issue of bad faith doesn't come up often but it is important. The South African Trade Marks Act, 1993 says that in order to file a trade mark application, you must have a bona fide (good faith) claim to ownership of that trade mark. It also says that a trade mark cannot be registered if the application is made mala fide (in bad faith).

In South Africa, the issue of bad faith has become closely linked with the principle of territoriality. The territoriality principle says that trade marks are territorial in nature, which means that a company is perfectly entitled to adopt, in South Africa, a trade mark that has already been used abroad. The most famous South African decision on the point is Victoria's Secret Inc v Edgars Stores Ltd. In this case, a US company took a South African company to court for "stealing" its trade mark. The Supreme Court of Appeal ("SCA") held that a South African company is perfectly entitled to adopt a trade mark that has been used abroad but not in South Africa, provided that there isn't "something more". Something more means bad faith, something that might be evidenced by a prior commercial relationship between the companies, or some other form of sharp practice.

In more recent cases, the SCA has suggested that the territoriality principle has become outmoded in the light of the fact that South African trade mark law now gives specific protection to "well-known marks" – trade marks that are well-known in South Africa despite the fact that they haven't been used in the country. But, it has also said that it doesn't have the power to change it. In the 2018 case of Truworths Ltd v Primark Holdings it said this: "Territorial isolation is a vanishing phenomenon... [but] if the principle of territoriality in relation to trade marks is to be revisited in the light of the changing social milieu, this will require an internationally concerted political effort and considerable political will... these are matters beyond the province of this court."

So, for now the territoriality principle applies, but that doesn't necessarily mean that bad faith can't be applied to other cases where there might be no relationship between the parties. So, would the Trump case have been decided the same way in South Africa? We can perhaps get some guidance from the decision of Reynolds Presto Products Inc v P.R.S Mediterranean Limited and the Registrar of Trade Marks.

Although was a commercial relationship between the parties in this case there – a former licensee had registered the trade mark of its former licensor – the judge discussed the issues of good and bad faith in very broad terms, using concepts of ethics and morality. He spoke of "an ethical value judgment", a "moral claim to ownership", and conduct "that falls short of the ethical standards of acceptable commercial behaviour." Applying concepts like this it is, we think, possible that in South Africa, bad faith could be successfully raised in a case similar to the Trump case.

There is, perhaps, some irony in the fact that Donald Trump has successfully raised bad faith in a trade mark case. As we've seen in previous articles, the US President appears to have a somewhat erratic approach to IP. On the one hand, he seems to value IP highly – he and his family have managed to get a number trade marks registered in China, and he has of course cited IP violations by China as a justification for trade sanctions. On the other hand, we've seen how in Canada, Trump managed to escape personal liability in a case where his trade mark holding company licensed a Canadian company to use Trump trade marks for a property development – seemingly on the back of representations that Trump-branded properties get very good rentals – only to be sued for misrepresentation when things didn't go as well as anticipated. More recently, we've seen him get into trouble with famous musicians for unauthorised use of their songs at rallies. It's never straightforward with Donald Trump!

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions