The Trade Mark That Refused to Die: Deadwood or Zombie?

The Case of Altron Ltd v Tracker (Pty) Ltd

Pretoria High Court, 2026

A trade mark unused for almost ten years might ordinarily be destined for removal. Yet in Altron v Tracker, residual reputation helped keep the registrations alive, highlighting the role of standing and judicial discretion in non-use proceedings and raising a difficult question about how long goodwill should sustain exclusive rights.

The Shelf Life of a Trade Mark

What is the shelf life of a trade mark?

Five years of non-use would ordinarily place a registered trade mark in serious jeopardy. Yet in Altron Ltd v Tracker (Pty) Ltd, the Pretoria High Court was confronted with a trade mark that, despite almost a decade of non-use, remained firmly on the register. The case became a fascinating discussion about standing, residual reputation and the scope of the Court’s discretion in non-use cancellation proceedings.

The Dispute in Brief

Tracker owned four registrations for the slogan TAKING BACK TOMORROW in classes 35, 37, 39 and 45. The slogan formed part of a major advertising campaign and featured prominently in Tracker’s branding for many years. It was common cause that Tracker had not used the mark since 2016.

Altron wished to adopt the slogan TAKE ON TOMORROW and sought the removal of Tracker’s registrations under section 27(1)(b) of the Trade Marks Act on the basis of non-use for a continuous period exceeding five years.

A Straightforward Non-Use Challenge

Altron’s argument was straightforward. Section 27(1)(b) permits the removal of a registered trade mark that has not been used for a continuous period of five years. Tracker had admittedly not used the mark since 2016. On that basis, Altron contended that the registrations should be removed.

Goodwill Never Dies?

Tracker accepted the non-use but argued that the enquiry did not end there. It relied on the extraordinary success of its campaign, advertising expenditure exceeding R145 million, extensive national television and radio advertising, expert evidence and other circumstances from which continuing recognition and goodwill could, it argued, be inferred. Tracker contended that substantial residual goodwill remained despite the cessation of active use.

The Standing Hurdle

Before considering the merits, the Court examined whether Altron qualified as an “interested person” under section 27(1). The Court undertook a detailed review of the authorities and reaffirmed that an applicant must demonstrate a real commercial interest in the removal of the mark and more than a merely speculative or academic concern.

The difficulty for Altron was that it simultaneously argued that:

• Tracker’s registrations were not confusingly similar to TAKE ON TOMORROW;
• there was no impediment to registration of Altron’s mark, which had been conditionally accepted; and
• Tracker’s concerns regarding similarity were unfounded.

At the same time, Altron sought removal of Tracker’s registrations. The Court regarded these positions as mutually destructive. If the registrations presented no legal or commercial impediment, what genuine commercial interest justified their removal?

The Court therefore concluded that Altron lacked locus standi.

Residual Reputation Takes Centre Stage

Although its finding on standing was sufficient to dispose of the application, the Court proceeded to consider the merits in case its conclusion on standing was incorrect.

The most significant aspect of this part of the judgment lies in its treatment of residual reputation. The Court emphasised that goodwill does not necessarily vanish when use ceases. Whether residual reputation exists is a factual enquiry requiring consideration of factors such as the scale and duration of prior use, the impact of earlier advertising, continued public recognition and the conduct of competitors.

Applying those principles, the Court found that Tracker had established substantial residual reputation. In reaching that conclusion, it relied on:

• a campaign that had run for approximately nine years;
• advertising expenditure exceeding R145 million;
• extensive national exposure through television and radio advertising;
• iconic advertisements, including the “Memories” campaign;
• the continued online availability of the campaign;
• expert evidence to which Altron had not objected; and
• evidence that the Court regarded as demonstrating continuing commercial value in Tracker’s branding and associated goodwill.

The Court therefore held that the mark continued to enjoy meaningful goodwill despite years of non-use.

A Statutory Route Closed

Tracker also sought to rely on section 27(5) of the Act, which excludes from the non-use provisions marks entitled to protection under the Paris Convention as well-known marks within the meaning of section 35(1). The Court acknowledged Tracker’s argument that the existing interpretation of the provision produced an irrational distinction between foreign and domestic proprietors. It nevertheless held that it remained bound by Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd, in which section 27(5) was interpreted as protecting qualifying well-known marks of foreign proprietors rather than domestic proprietors.

Tracker could therefore not rely on section 27(5). Residual reputation did not provide it with an independent statutory defence to non-use. Its significance arose instead in the Court’s discretionary assessment.

The Discretionary Safety Net

The judgment is also important because it emphasises that proof of non-use does not automatically result in expungement.

The Court held that it retains a discretion whether to remove a registration, even where the statutory ground for removal has been established. That discretion must be exercised judicially, taking account of relevant considerations such as residual reputation, the likelihood of deception, the conduct of the applicant and the public interest.

Having found substantial residual reputation, and having criticised aspects of Altron’s conduct, the Court exercised its discretion against expungement.

Why This Decision Matters

Non-use applications are often viewed as relatively mechanical:

No use for five years? The mark comes off the register.

This judgment demonstrates that the position is considerably more nuanced. While the statutory ground for removal may be established, that does not necessarily mean that expungement will follow. The decision confirms that substantial residual reputation may play a decisive role in the Court’s discretionary assessment, even where prolonged non-use is common cause.

More broadly, the case highlights the tension between two competing objectives of trade mark law: maintaining a register that reflects marks in genuine commercial use and protecting the goodwill that traders have accumulated over time.

A Recognition of Commercial Reality

One of the judgment’s strengths is its recognition of commercial reality.

Brands do not disappear from public consciousness overnight. Some advertising campaigns leave a lasting impression and continue to generate goodwill long after they are discontinued. The Court’s acknowledgement of this commercial reality is consistent with established principles recognising that reputation may endure beyond active use.

The Court also appears to have been influenced by evidence suggesting that others continued to perceive commercial value in Tracker’s branding and associated goodwill. In that regard, the judgment reflects a reluctance to permit another trader to benefit from commercial value created through years of investment and market exposure.

The Difficult Questions

The judgment is nevertheless open to criticism.

The first question is whether the decision dilutes the purpose of the non-use provisions. The Court itself recognised that the register is intended to contain marks that are used, or intended to be used, in trade rather than functioning as a warehouse for unused marks. Non-use cancellation serves an important public-interest function by preventing clutter, promoting commercial certainty and maintaining the integrity of the register.

The second and more difficult question concerns proof of residual reputation. Tracker’s evidence undoubtedly established that its campaign had previously been highly successful. The more challenging enquiry was whether consumers still associated TAKING BACK TOMORROW with Tracker nearly ten years after active use ceased.

The Court answered that question in the affirmative. However, its conclusion was reached largely through inferences drawn from the historical success of the campaign, substantial advertising expenditure, expert evidence, continued online availability and related commercial activity, rather than direct evidence of contemporary consumer recognition.

Whether evidence of historical success should suffice to establish ongoing reputation after such a prolonged period of non-use is likely to remain controversial. Contemporary consumer surveys are not necessarily required in every case, but direct market evidence may have provided a firmer basis for determining whether the slogan continued to function in the minds of consumers as an indicator of origin.

The Court’s approach to standing may also invite scrutiny. Businesses may seek removal of unused registrations to reduce future risk and commercial uncertainty before adopting a new brand. A party may genuinely believe that a mark presents a low risk of confusion while still wishing to remove a registration that could become an obstacle or source of dispute. Against that background, the Court’s rejection of Altron’s precautionary interest may be viewed as imposing a restrictive threshold for standing.

The Bigger Question

The significance of Altron v Tracker lies in its recognition that the consequences of non-use cannot always be assessed without regard to accumulated goodwill.

The judgment demonstrates that prolonged non-use will not necessarily result in removal where substantial residual reputation remains and the Court considers that the circumstances weigh against expungement. It does not, however, establish that residual reputation automatically saves an unused registration. In this case, Altron failed to establish standing and, even if it had done so, the Court would have exercised its discretion against removal.

The Court repeatedly emphasised that the purpose of the non-use provisions is to prevent clutter on the register and ensure that it reflects marks genuinely used in trade. Nevertheless, registrations that had not been used since 2016 survived a challenge brought nearly a decade later.

The difficult question therefore remains: when does residual reputation cease to justify exclusionary rights, and when should the public interest in a clear and uncluttered register prevail?

If goodwill can keep a trade mark alive long after active use has ended, the real challenge is identifying the point at which memory becomes monopoly. After all, a trade mark register is not meant to be a graveyard, but neither is it a place where the dead walk forever.