On 27 March 2025, the High Court of Botswana (in Lobatse) presided over by Judge Busang, delivered a significant judgment in the matter between Specsavers (Pty) Ltd (hereafter Specsavers Botswana) and Strategic Ideal Holdings (Pty) Ltd, the licensee of Spec-Savers South Africa. Specsavers Botswana alleged that Strategic Ideal Holdings was passing off through the use of the trade mark SPECSAVERS seeking an interdict and other relief, including punitive costs.
Facts and legal consideration
Specsavers Botswana claimed to have adopted and used the SPECSAVERS trade mark since 1999, asserting that it had built a reputation in Botswana associated with the mark. Spec-Savers South Africa had registered the SPEC SAVERS trade mark in 2001 and Strategic Ideal Holdings began using it in Botswana under license. Specsavers Botswana alleged that the use of the SPEC SAVERS mark by Strategic Ideal Holdings was likely to cause confusion or deception among consumers, amounting to passing off.
Strategic Ideal Holdings, in defending the claim, challenged the sufficiency of the evidence presented by Specsavers Botswana. They also argued that the rights conferred by their registered trade mark were positive rights as opposed to negative rights and as such, they were entitled to use the mark lawfully.
The court examined the relevant provisions of Botswana's Industrial Property Act No. 8 of 2010, particularly sections 74(1) and 81(1) which state:
74. (1) The exclusive right to a mark under this Act shall be acquired by Registration in accordance with the provision under this Part.
81. (1) Registration of a mark shall confer on the registered owner, the right-
(a) to exclusive ownership of that mark;
(b) to prohibit third parties from using the mark; and
(c) to institute court proceedings against any person infringing his or her rights."
These provisions underscore that trade mark registration in Botswana grants affirmative rights to the holder, including the right to use the mark and protect it from unauthorised use.
Findings
Judge Busang reviewed case law from Botswana, Namibia, and South Africa to assess the delict of passing off. The court emphasised that a successful passing off claim requires clear evidence of:
- Reputation: The claimant must show that the mark has acquired distinctiveness and recognition in the market.
- Misrepresentation: There must be a demonstrable likelihood that the public would be misled into believing the goods or services of the defendant are those of the claimant.
- Damage: The claimant must show that the misrepresentation has caused or is likely to cause harm.
The court found that Specsavers Botswana had failed to meet these evidentiary thresholds. The evidence presented did not sufficiently establish a reputation associated with the SPECSAVERS mark, nor did it convincingly demonstrate how the respondent's use of SPECSAVERS caused confusion or deception.
Furthermore, the court held that Strategic Ideal Holdings' use of the SPEC SAVERS mark was protected by its lawful trade mark registration, which conferred a positive right to use and own the mark in Botswana.
Decision
The court dismissed Specsavers Botswana's application with costs, including the costs of counsel. The judgment is notable for reinforcing the principle that trade mark registration in Botswana grants positive rights, and that passing off claims must be substantiated with robust evidence.
The case is notable, from a legal standpoint, because:
a) it is only the second reported passing off judgment in Botswana;
b) it affirms the value of a registered trade mark in Botswana, being a positive right, i.e., a right to ownership and use of the trade mark, and not simply a negative right to stop others from using; and
c) it shows that litigants in a passing off case must meet the evidentiary thresholds for establishing reputation and the misrepresentation.
Specsavers Botswana has appealed the decision.
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.
