Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another

• Jurisdiction: South Africa
• Judge: Corbett CJ, Botha JA, F H Grosskopf JA, Nienaber JA and Nicholas AJA
• Judgment Date: 26 September 1991
• Citation: 1991 (4) SA 850 (A)
• Hearing Date: 29 August 1991
• Court: Appellate Division

Nienaber JA:

The appellant and the first respondent are the registered proprietors of the identical trade mark, 'French Connection' - the appellant in class 25 in respect of, broadly speaking, clothing, the first respondent in class 3 in respect of, broadly speaking, cosmetics. G The disagreement between them commenced when the appellant decided to extend its trading operations from clothing to cosmetics. At first it tried to acquire the first respondent's mark in class 3 for a nominal consideration. When that failed the appellant did two things: it applied to the Registrar of Trade Marks for registration of the mark 'French Connection' in class 3 and it initiated proceedings in the Transvaal H Provincial Division, citing the Registrar as the second respondent, to have the trade mark register rectified by the expungement of the first respondent's mark in that class. The application for expungement failed. A subsequent application for leave to appeal to this Court succeeded. I Hence this appeal. The Registrar of Trade Marks chose not to participate in the proceedings, then or now, and I propose, therefore, to refer to the first respondent hereinafter simply as the respondent.

The relevant trade mark registration particulars are as follows: The appellant is the registered proprietor of the following trade marks:

No 80/2779 'French Connection' in class 25 dated 5 May 1980 in respect J of 'articles of clothing for women and girls'.

Nienaber JA

A No 83/2435 'French Connection' in class 25 dated 21 April 1983 in respect of 'articles of clothing of all kinds'.

The appellant, furthermore, is the applicant for registration of trade mark No 88/4511 'French Connection' in class 3 dated 7 June 1988 in respect of

B 'soaps, perfumery, essential oils, toiletries, deodorants, cosmetics, hair lotions and hair care products of all kind; sun-tan preparations; dentifrices'.

The respondent is the registered proprietor of trade mark No 85/7734 'French Connection' in class 3 dated 29 October 1985 in respect of 'cosmetics, toiletries, sun-tan preparations'.

In the rectification proceedings the appellant, as applicant, asked C for an order

(1)

authorising and directing the second respondent to rectify the register of trade marks by expunging therefrom the entry relating to trade mark No 85/7734 'French Connection' in the name of the first respondent;

(2)

D ordering the first respondent to pay the costs of the application.

This relief was sought in terms of s 33(1) of the Trade Marks Act 62 of 1963 ('the Act'), which provides as follows:

'Any person aggrieved by the non-insertion in or omission from the register of any entry, or by any entry made in the register without E sufficient cause or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply to the Court or, at the option of the applicant and subject to the provisions of s 69, on payment of the fees prescribed in the prescribed manner, to the Registrar, for the desired relief and thereupon the Court or the Registrar, as the case may be, may make such order for making, expunging or varying the entry as to it or him may seem fit.'

F The appellant maintained that the entry of the respondent's trade mark in class 3 of the register was an entry 'made without sufficient cause' and was an entry 'wrongly remaining' on the register because it offended against the provisions of both ss 17(1) and 16(1) of the Act: s 17(1) in that the use of the two identical trade marks (the one by the respondent in relation to the goods in respect of which it was sought by the G respondent, as at October 1985, to be registered (essentially cosmetics), the other by the appellant in relation to the goods in respect of which it was then already registered (clothing)), would be likely to deceive or cause confusion; and s 16(1) in that the use by the respondent of its trade mark would be likely to deceive or cause confusion.

H Section 17(1) of the Act provides as follows:

'Subject to the provisions of ss (2), no trade mark shall be registered if it so resembles a trade mark belonging to a different proprietor and already on the register that the use of both such trade marks in relation to goods or services in respect of which they are sought to be registered, and registered, would be likely to deceive or cause confusion.'

I Section 16(1) of the Act provides as follows:

'It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would be likely to deceive or cause confusion or would be contrary to law or morality or would be likely to give offence or cause annoyance to any person or class of persons or J would otherwise be disentitled to protection in a court of law.'

Nienaber JA

A The appellant's application was refused with costs. The Court a quo (Van Wyk AJ) upheld a point in limine that the appellant was not 'a person aggrieved' within the meaning of s 33(1), and accordingly lacked locus standi, because it failed to establish, on a balance of probabilities, that it had a definite, genuine and present intention of becoming a trade rival of the respondent. In the result, after the Court had heard argument on all the issues, it made no findings on the merits. B The judgment of the Court a quo is reported. (Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another 1990 (2) SA 619 (T).)

An applicant for relief in terms of s 33(1) of the Act must first show, the onus being on him, that he is a 'person aggrieved'. (Mars Incorporated v Candy World (Pty) Ltd 1991 (1) SA 567 (A) at 575H-I.) It C is a prerequisite designed to prevent vexatious, mischievous or merely meddlesome applications - where the applicant concerned does not, for instance, have a genuine and legitimate competitive interest in the trade to which the allegedly offending mark relates, and hence in the outcome of the proceedings. (The authorities are reviewed in Webster and D Page South African Law of Trade Marks 3rd ed at 330ff.) Notwithstanding the importance of the public interest in matters concerning the rectification of the register (Webster and Page (op cit at 335, 337)), a mere general interest in the accuracy and integrity of the register will not do. An applicant must prove that on some or other ground he has a particular interest in the removal of the targeted mark from the E register. (Ritz Hotel Ltd v Charles of the Ritz Ltd and Another 1988 (3) SA 290 (A) at 308A.) An obvious case in point is where the applicant is a trade rival of the registered proprietor of the subject mark; so, too, where he is a potential trade rival in the sense of

F 'having at the time of registration some definite and present intention to deal in certain goods or descriptions of goods, and not a mere general intention of extending his business at some future time to anything which he may think desirable'

(J Batt and Company [1898] 15 RPC 534 (CA) at 538, quoted with approval in the Ritz Hotel case supra at 310C). This the applicant must G establish, not on a preponderance of probabilities, but as a reasonable possibility. (In the matter of Powell's Trade Mark [1893] 10 RPC 195 (CA) at 201, 202; Webster and Page (op cit at 332).) In In re Appollinaris Company's Trade Marks [1891] 2 Ch 186 (CA) at 225 Fry LJ, it is true, speaks of a 'reasonable probability' of excluding a rival trader, but in American Chewing...