Trademarks belonging to UK retailer Primark have been attached by the sheriff of the court, a year after it finally got them back following a decade-long standoff with retailer Truworths.
Primark’s latest court battle is with the SA online retailer MyRunway who alleges it has stopped supplying it with stock in breach of a contract between the pair. MyRunway has asked the high court in Pretoria to enforce the multiyear agreement. The court has since attached the local trademarks, to give them jurisdiction over the case.
SA site MyRunway.co.za, started by a husband and wife team in a Sea Point apartment, has grown into a substantial business, selling mostly designer labels and imported products online. It started selling Primark clothing in December 2021, with the latter’s support.
When the supply dried up, MyRunway turned to the court where Primark has said there is no existing contract between the parties.
“While Primark undertook to negotiate with MyRunway in an effort to reach agreement on the supply of product, the parties failed to reach any agreement. It is for the court now to ultimately resolve this issue,” Primark said.
In order for the case against the retailer, headquartered in Ireland, to go ahead, Primark’s local assets needed to be attached to give the court in SA jurisdiction.
Hahn & Hahn lawyer Vanessa Lawrance, not involved in this case, said in order to take a foreign company to court, the company needs to have some assets in SA that could be attached and sold should the lawsuit succeed.
Trademark asset
“A trademark is an asset and can be seized like any [other] asset,” she said.
If Primark loses the case, MyRunway will be able to sell the assets to satisfy its case against them, Lawrance said. In the meantime while the case makes its way through the courts, the Primark trademark cannot be sold and nothing can be done with it, she said, while MyRunway will need to prove Primark is in breach of contract.
Despite Primark not having a presence in SA its trademark, which was first registered here in 1976, has been before the local courts for a decade.
Clothing retailer Truworths in 2013 tried to register the same trademark, but was told it was owned by Primark, which operates in European countries and the US with more than 400 stores in total.
Truworths, however, went to court to have it expunged as SA law allows a trademark to be removed if it has not been used for five years.
Truworths won the case against Primark at the appellate court in 2018 as Primark had no intention of operating in SA. However, in 2019 Primark attempted to register its trademark again.
In 2020, Truworths started opening Primark stores, unrelated to the UK firm.
Rebrand
The case eventually ended in an undisclosed settlement between the pair in 2021, but led to Truworths rebranding its Primark stores to Sync.
My Runway believes it was used to sell original Primark clothes locally in 2021, until a settlement with Truworths was reached.
MyRunway says in a note about the case: “Ironically, it was only after Primark partnered with MyRunway that Primark finally managed to settle the dispute over the ownership of their trademarks.
“Despite MyRunway being crucial in Primark’s success, and working closely together for months, Primark unexpectedly failed to honour their own multiyear distribution agreement with MyRunway the very same month in which they finally settled the dispute regarding the rights to the Primark trademarks.
“It seems shipments to MyRunway were unceremoniously halted at the moment of their triumph.”
MyRunway MD Rob Noble told Business Day: “It’s unfortunate that the courts were needed to resolve this issue. Primark required help with their trademark dispute, and gave us a proposal built around their need to stand up for their ethics and values ... We agreed to come on board and had a great relationship for months, meeting with them regularly in Ireland.
“We spoke at length about mutual benefits beyond just our exclusive distributor agreement.”
He said MyRunway was committed to bolstering Primark’s brand presence in SA and conducted extensive market research at their request.
“We continue to believe in the potential of the brand, as our customers rushed to snap up the Primark product when it was available.”
Primark told Business Day it works to protect its brand “to avoid misrepresentation and consumer confusion”.
Correction: July 17 2023
This story has been updated to reflect the website as MyRunway.co.za. It is not MyRunway.com as previously stated.
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