Case Information
| Field | Details |
|---|---|
| Nooktoria Citation | BW-HC-2025-001 |
| Case Name | Specsavers (Pty) Ltd v Strategic Ideal Holdings (Pty) Ltd |
| Court | High Court of Botswana |
| Court Station | Lobatse |
| Case Number | MAHGB-000389-19 |
| Judge | Busang J. |
| Date of Judgment | 27 March 2025 |
| Applicant | Specsavers (Pty) Ltd |
| Respondent | Strategic Ideal Holdings (Pty) Ltd |
| Area of Law | Intellectual Property; Trademark Law; Passing Off; Unlawful Competition |
| Proceeding | Application for an interdict |
| Outcome | Application dismissed with costs, including counsel’s costs |
| Legislation Considered | Sections 74 and 81 of the Industrial Property Act No. 8 of 2010 |
I. Overview
The High Court of Botswana dismissed an application brought by Specsavers (Pty) Ltd to prevent Strategic Ideal Holdings (Pty) Ltd from using the SPEC SAVERS trademark in connection with its ophthalmic and dispensing optician business. The applicant alleged that the respondent’s use of the name amounted to passing off because members of the public were likely to believe that the respondent’s business was the applicant’s business or was associated with it.
The Court found that the applicant had not properly pleaded or proved that the respondent made a misrepresentation capable of confusing or deceiving the public. It also found that the respondent was using a trademark registered in Botswana by Spec Savers South Africa (Pty) Ltd under a licence.
II. Trademark in Dispute
| Field | Details |
|---|---|
| Applicant’s mark or trading name | SPECSAVERS |
| Respondent’s mark or trading name | SPEC SAVERS |
| Principal distinction | The applicant used the name as one word, while the respondent used two words |
| Nature of use | Ophthalmic and dispensing optician services |
| Registered proprietor identified in the judgment | Spec Savers South Africa (Pty) Ltd |
| Authorised user | Strategic Ideal Holdings (Pty) Ltd |
| Trademark numbers referenced | BW/M/2001/00237 and BW/M/2001/000238 |
| Application date stated in the judgment | 5 July 2001 |
| Classes stated in the judgment | Classes 5, 9, 35 and 42 |
| Registration status | Registered |
III. Background
The applicant and respondent were competitors in Botswana’s ophthalmic optician industry. The applicant stated that it began operating in Botswana in late 1999 and had shops in Francistown and Gaborone. It claimed that its longstanding use of SPECSAVERS had created substantial goodwill and a protectable reputation in Botswana.
The respondent began operating in 2014 and had shops in Gaborone and Maun. It was a licensee of Spec Savers South Africa (Pty) Ltd, which owned registered Botswana trademarks for SPEC SAVERS.
The applicant argued that it had adopted and used the name before the South African company registered the trademarks in Botswana. It also informed the Court that proceedings had been commenced to cancel those registrations.
IV. Relief Sought
The applicant asked the Court for an order:
“Interdicting and restricting the Respondent from passing off its business as being that of the Applicant or being associated with the Applicant by using the Trade Mark SPECSAVERS in respect of its ophthalmic and dispensing opticians business.”
The applicant also sought costs on an attorney-and-client scale and further or alternative relief.
V. Applicant’s Arguments
The applicant argued that:
- It had used SPECSAVERS in Botswana since 1999.
- Its longstanding use had created a protectable reputation and goodwill in the name.
- Its business was widely known by customers, medical-aid organisations, suppliers and other institutions.
- The respondent offered the same services under an almost identical name.
- The public was likely to believe that the respondent’s business belonged to or was associated with the applicant.
- The respondent’s use of the name therefore amounted to passing off.
- Its rights arose before Spec Savers South Africa registered the trademarks in Botswana.
VI. Respondent’s Arguments
The respondent argued that:
- Spec Savers South Africa was the registered proprietor of the SPEC SAVERS trademarks in Botswana.
- The respondent was authorised to use the trademarks as a licensee.
- Sections 74 and 81 of the Industrial Property Act granted the registered proprietor exclusive trademark rights.
- The applicant had not established a protectable reputation in the mark.
- Evidence of using a name did not, by itself, establish the reputation required for a passing-off claim.
- The applicant had not presented evidence of any misrepresentation.
- There was no evidence that members of the public believed or were likely to believe that the respondent’s services originated from or were associated with the applicant.
VII. Issues for Determination
The principal issue was whether the respondent’s use of SPEC SAVERS amounted to passing off.
This required the Court to consider whether the applicant proved:
- A protectable reputation or goodwill in the name;
- A misrepresentation by the respondent that its business was the applicant’s business or was connected with it; and
- Actual or probable damage resulting from the misrepresentation.
The Court also considered the effect of the existing Botswana trademark registrations and the respondent’s status as a licensee.
VIII. Decision and Reasoning
The Court explained that passing off is a form of unlawful competition. It occurs when a person expressly or impliedly represents that their business or goods belong to, or are connected with, another person’s business.
The Court identified three essential elements:
- Reputation or goodwill;
- Misrepresentation; and
- Damage or the likelihood of damage.
Failure to prove any one of these elements would defeat the claim.
The applicant’s founding affidavit merely asserted that the respondent’s conduct amounted to passing off and that the public was likely to believe the businesses were connected. The applicant did not explain precisely how the respondent had made the alleged misrepresentation.
In particular, the applicant did not identify:
- The distinctive features of the respondent’s trading presentation that caused confusion;
- The particular words, signs, images or get-up complained of;
- How the respondent represented that the two businesses were connected; or
- Evidence establishing an actual or likely deception of the public.
The Court emphasised that a party must stand or fall by its affidavits, particularly its founding affidavit. A bare assertion of passing off was insufficient.
The Court also noted that Spec Savers South Africa had lawfully registered the disputed trademarks in Botswana and that the respondent used them under a licence. The applicant had not proved wrongful or unlawful conduct by the respondent despite those registered rights.
The Court therefore concluded that the applicant had failed to establish the requirements of passing off.
IX. Holding
The applicant failed to prove that the respondent made a misrepresentation that caused or was likely to cause members of the public to believe that the respondent’s business was the applicant’s business or was connected with it.
The passing-off claim therefore failed.
X. Order
The Court ordered:
“The application is dismissed with costs including costs of counsel.”
XI. Significance of the Decision
The judgment confirms that longstanding use of a business name does not, by itself, establish passing off.
An applicant must clearly identify and prove the representation alleged to cause confusion. General statements that two businesses use similar names or offer the same services are insufficient without evidence explaining how the public is likely to be deceived.
The decision also illustrates the practical importance of trademark registration in Botswana. Although passing off may be pursued without a registered trademark, an applicant must still prove reputation, misrepresentation and actual or probable damage.
The Court did not determine the validity of the registered trademarks or the applicant’s separate cancellation proceedings. Its decision concerned whether the applicant proved passing off on the evidence presented in this application.
XII. Full Judgment
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View or Download the Full Judgment (PDF)