Television Radio Centre (Pty) Ltd v Sony Kabushiki Kaisha t/a Sony Corporation

1987 (2) SA 994 (A) | Appellate Division

Why this case matters

The Appellate Division authority for the material-alteration carve-out from trade-mark statutory exhaustion. Where genuine goods bearing a registered mark are materially altered after market and then re-sold, they are no longer “the goods to which the trade mark has been applied by or with the consent of the proprietor” within the meaning of TMA s 34(2)(d). Statutory exhaustion does not apply, and the re-sale can constitute infringement.

Facts

The appellant, Television Radio Centre (TRC), imported video cassette recorders manufactured for the United Kingdom market into South Africa, then modified them to receive local PAL television signals. The modified VCRs were sold under the SONY trade mark. SONY (the mark proprietor) sued for infringement.

Held

• The unmodified VCRs would have been protected by TMA s 34(2)(d) exhaustion — they were genuine SONY-branded goods that had been put into circulation with the proprietor’s consent.
• However, after TRC’s PAL modifications, the goods were no longer the same goods to which the trade mark had been applied with the proprietor’s consent. They were materially altered.
• The re-sale of the modified VCRs under the SONY mark therefore constituted trade-mark infringement under s 34(1)(a) — the s 34(2)(d) exhaustion defence was unavailable.

Operative principle

Statutory exhaustion under TMA s 34(2)(d) protects re-sale of genuine, unaltered goods to which the mark has been applied by or with the consent of the proprietor. Material alteration after market — change of specification, modification of the underlying product, repackaging that changes the goods themselves — takes the goods outside the exhaustion zone.

Citation note

The case is also cited in some commentary with the parties reversed (Sony Kabushiki Kaisha v Television Radio Centre) — Sony was the appellant in the underlying proceedings before the AD upheld its trade-mark claim. The controlling citation is 1987 (2) SA 994 (A).

Site reliance

src/data/content.ts Clause 17 (resale-prohibition) cites the case as one of two carve-outs from s 34(2)(d) exhaustion:

“Television Radio Centre v Sony Kabushiki Kaisha 1987 (2) SA 994 (A) — where goods are materially altered after market, exhaustion doesn’t apply. Parallel-imported goods with changed specification fall outside s34(2)(d).”

This is structurally important because it limits the consumer’s “you can sell your own property” defence to genuine, unaltered goods. A consumer who modifies branded goods and then sells them under the brand may indeed face infringement — the CPA-resale-prohibition argument doesn’t reach modified goods.

Cross-references

• Frank-Hirsch-Roopanand-1993.md — copyright-on-packaging carve-out
• citations/statutes/TMA-1993.md — s 34(2)(d) statutory exhaustion

Status

Pre-digital judgment — not on SAFLII or LawLibrary’s neutral-citation index for this name. Operative principle summarised from Lexology / KISCH IP commentary explicitly addressing the case in the parallel-importation context. Verbatim text in SALR physical reports.