One Letter, Two Classes: Trolley Company v Riekert and the Limits of Paring Down

The Trolley Company (Pty) Ltd v Riekert, Gauteng Division, Pretoria, case nos. 2026/031762 and 2025/024546, judgment delivered 4 August 2026 (Hinrichsen AJ)

Introduction

“At the heart of this matter lies a single letter.” So opens the judgment in Trolley Company v Riekert. The proprietor held JOLLY TROLLY registrations in classes 28 and 12; the respondent sold handcarts under JOLLY TROLLEY. The marks were, to eye and ear, the same. The real contest was whether the respondent could have the registrations removed before they were turned against him, the familiar use of rectification as a defence to infringement.

The respondent attacked the registrations on several grounds. The court rejected each, dismissed the rectification application and granted an interdict. For the most part its reasoning restates settled principle. This note concerns one passage only: the reasoning on partial expungement of the class 28 registration at paragraphs 30 to 34, which in our view conflates two distinct legal mechanisms.

Where the wheels come off: paragraphs 30 to 34

As part of the non-use attack, the respondent contended that the proprietor’s use had been on a utility transport device, a class 12 good, rather than on a class 28 toy. The court treated this as a plea to pare back the class 28 specification under section 28(2), “to be tested on the notional-consumer approach in Thomson Holidays, Scientific Chemicals and Kemtek” (para 30). It held that the consumer “would place it within class 28 when used for play and within class 12 when used to carry goods” (para 30), and that the respondent had not shown the goods to be “incapable of answering the class 28 specification” (para 33).

With respect, this applies the right test to the wrong question. Framed as a plea for paring back, the point invited the consumer-description test. But the real contention was not that the class 28 specification was too wide; it was that there had been no use on class 28 goods at all. That is a claim for removal under section 27(1)(a), on which the proprietor bears the onus, not a dispute about how to describe goods within the class.

Two different mechanisms

The leading authority on paring back is Arjo Wiggins Ltd v Idem (Pty) Ltd, in which the Supreme Court of Appeal approved Kerly’s test: where there has been genuine use only on a particular item, “how would the notional reasonable man describe that item?” Scientific Chemicals and Kemtek applied Arjo Wiggins, and Thomson Holidays is to the same effect. Each concerned a specification wider than the use made of the mark, within a single class: in Arjo Wiggins, “paper” used only on carbonless copying paper; in Kemtek, hair and skin preparations used only on hair-food.

Arjo Wiggins also supplies the litmus test: partial removal cannot be granted unless the expungement sought “describes a commercially coherent category of goods within the existing specification”. The test assumes that the goods traded in fall within the specification, and therefore the class. It asks whether a coherent slice can be carved out of a correctly classified category. It cannot answer whether goods belong in the class at all.

That is a question of classification. Section 11(1) requires registration in respect of goods “falling in a particular class or particular classes in accordance with the prescribed classification”, namely the Nice Classification. Whether a product falls in class 12 or class 28 depends on the nature of the goods, not on how a consumer would describe them. Kerly itself draws the line (para 9-72(3)): the Nice Classification guides “which items properly fall within which class”; the notional reasonable man decides how goods within the specification are described. Consumers do not classify goods. Whether a foldable utility wagon is a class 28 good is a question of fact, not of perception or discretion.

Dual-use goods

The court found that the trolley had “the dual functional character of a utility transport device and a recreational plaything” (para 32). But classification does not turn on the secondary use to which a purchaser may put a product. A handcart in which children are sometimes pulled remains a handcart. One of the court’s own authorities makes the point: in Scientific Chemicals, Swart J held that a sanitising spray sold only as a shoe freshener was a fungicide and sanitary preparation, because “the emphasis was on the objective nature of the product and not the purpose for which it was intended”. Paragraph 30 does the opposite, allocating the wagon to a class according to whether it is “used for play” or “used to carry goods”. On that approach almost any product could straddle classes.

The onus

Paragraph 33 compounds the problem by placing the onus on the respondent to show that the goods were “incapable of answering the class 28 specification”. Section 27(3) places the onus of proving use on the proprietor, as the court itself recognised at paragraphs 18 and 24, and it is a true onus (Scientific Chemicals). The proprietor had to prove use on class 28 goods; the respondent did not have to prove a negative.

Discretion: the better route

None of this means the class 28 registration had to go. Removal is not automatic: the court retains a discretion (para 21), and this may well have been a case for it. The registration had stood for years, the proprietor had used the mark on closely related goods since 2015 or 2016, and the respondent came later. But that is a discretion not to expunge notwithstanding non-use. The judgment instead found use in both classes, and that finding is, in our view, the error.

Did it matter?

Practically, perhaps not much. The respondent accepted that his handcarts were class 12 goods, so the class 12 registration was directly infringed (para 54), and passing off was also established (para 62). But the point is one of principle. If consumer perception and putative dual use can carry a registration into a class the goods do not occupy, the non-use provisions lose much of their bite, and owners will be tempted to register across classes on the strength of a single product.

Conclusion

Trolley Company v Riekert is, on the whole, a careful judgment. But paragraphs 30 to 34 elide the distinction between defining a fair sub-category of goods within a specification and the prior, factual question of which class the goods belong in. The court could have retained the class 28 registration in its discretion. It could not, with respect, properly find that utility wagons were used as class 28 goods.

Authorities

Arjo Wiggins Ltd v Idem (Pty) Ltd and Another 2002 (1) SA 591 (SCA)

Kemtek (Pty) Ltd v Jaymia CC and Another 2011 BIP 197 (GNP)

Scientific Chemicals (Pty) Ltd v Liqui-Seal (Pty) Ltd and Two Others 2002 BIP 85 (T)

Thomson Holidays Ltd v Norwegian Cruise Line Ltd [2002] EWCA Civ 1828; [2003] RPC 32 (CA)

Kerly’s Law of Trade Marks and Trade Names 13th ed (Sweet & Maxwell, 2001)