admincompel the Zimbabwe Revenue Authority Commissioner-General to immediately restrict the import and export of counterfeit motor vehicle filters and bearings.
GUD Holdings is a leading manufacturer of automotive filters and bearings under the trade mark GUD in South Africa and has manufacturing factories in Pietmaritsburg, Durban and Cape Town.
The firm employs over 1 400 workers.
In its exparte chamber application GUD is seeking a relief following claims that there was a significant amount of counterfeit motor vehicle filters and bearings trade mark goods on the market in Zimbabwe.
The company said it wanted to protect the motoring public in Zimbabwe from purchasing counterfeit motor vehicle spares, which pose a safety risk.
GUD submitted that it is the registered proprietor of trade mark number 468/84, which is currently valid until August 28, 2014, as such it has a right to an infringement claim against any authorised third party use of its trade mark. Through its lawyers Gill Godlonton and Gerrans, GUD said it was seeking an Anton Piller Order in terms of Rules of the High Court read with the Trade Marks Act seeking an order restraining the importation of counterfeit goods.
This is a court order, which requires the defendant (Comm-Gen of the Zimbabwe Revenue Authority) in proceedings to permit the plaintiff (GUD) or his or her legal representatives to enter the defendant’s premises in order to obtain evidence essential to the plaintiff’s case.
“Applicant intends to institute proceedings for an infringement of its registered trademark,” the firm said.
GUD divisional director logistics Mr John Antony Trickery in his founding affidavit submitted that following an infringement of its trademark in Zimbabwe, GUD authorised test purchases to be made of motor vehicle bearings and filters being their trade mark and coded series Z162, Z188 and Z194.
“The test purchases were made from randomly selected retail outlets in Harare between October 30 2010 and November 30, 2010,” Mr Trickery said.
He said the purchased goods were using the GUD trademark without authorisation from the SA company.
“The counterfeit cannot be distinguished from the original without the aid of a professional expert. I have attached corporate digital images outlining the features of the original tapping plate, profile and
seal retailer design depicting the differences between the applicant’s (GUD) genuine filters in contrast to the counterfeit trade mark goods,” he said.
Mr Trickery said his company was reliably informed of the prevalence of numerous counterfeit trademark goods that are being sold in Harare mainly along Kaguvi Street, popularly known as “Little Lagos”.
He said based on test purchases made it has reasonable grounds to support a significant quantity of counterfeit trademark goods, which have been imported into Zimbabwe.
He said GUD would have to make an impossible number of test purchases in order to cite a number of defendants in the infringement claim.
“Applicant believes that this difficulty is detected by an Anton Piller Order. This would enable the applicant to whittle down defendants to only the significant infringes or alternatively which would provide applicant with a basis for seeking the defendants. At the same time this will be aiding preservation of evidence without which the court would be unable to establish liabilities or quantify infringement damages,” Mr Trickery said.
He said GUD believes that the trademark counterfeit goods can be hidden or destroyed.
“Applicant believes the seizure of the counterfeit goods in terms of an Anton Piller Order would assist in preserving evidence without which it would be prejudicial to its infringement suit,” Mr Trickery said.
GUD said the firm considered it critical for the import of the counterfeit goods to be restricted.
“Applicant believes that there is a real likelihood of the exhortation of the counterfeit trademark goods from Zimbabwe to neighbouring countries by the infringes should they become aware of the suit,” he said.
The company has appointed Mr Moses Donsa of Donsa-Nkomo and Mutangi as supervising attorney to ensure that the bona fide third party rights are represented.
A date for the case to be heard is yet to be announced.
Online Reporter