Adcock-Ingram Laboratories Ltd v SA Druggists Ltd and Another

• Jurisdiction: South Africa
• Judge: McCreath J
• Judgment Date: 04 December 1981
• Court: Transvaal Provincial Division
• Hearing Date: 02 June 1981
• Citation: 1982 (1) SA 856 (T)

McCreath J:

G The applicant is the registered proprietor in the Republic of South Africa of two trade marks, Stopayne and Pynstop. It has applied for an order authorising and directing the second respondent (the H Registrar of Trade Marks) to rectify the trade marks register by expunging and removing therefrom the trade mark Stilpane, which is registered in the name of the first respondent.

The application is based on two grounds. The first ground is that up to a date one month before the date of the application a continuous period of five years or more elapsed during which there was no bona fide use of the trade mark by the proprietor thereof (s 36 (1) (b) of the Trade Marks Act 62 of 1963). The second ground is that, if the Court should find that there has been use of the mark, such use offends

McCreath J

against the provisions of s 16 (1) of the said Act and should therefore be expunged from the register in terms of s 33 thereof.

A As far as the first ground is concerned, it is common cause that there has been no actual use of the mark during the aforesaid period of five years by the first respondent itself. It is also common cause, however, that there has been use thereof during the said period by a company known as Lennon Ltd, a wholly-owned subsidiary of the first respondent. B Nor can the applicant dispute the first respondent's allegations that the first respondent has complete financial control of Lennon Ltd and that the composition and quality of the products marketed under the trade mark Stilpane are also entirely controlled by the first respondent. It is common cause that Lennon Ltd is not a registered user C in terms of s 48 of the Trade Marks Act, but the first respondent contends that, by virtue of its control over Lennon Ltd and its products, as set out above, Lennon Ltd qualifies to be a registered user inasmuch as all the requirements for registration in terms of that section are satisfied. In these circumstances, so it is contended, the first respondent is protected from expungement of the mark from the D register as, so it is argued, it has in effect used the mark through its subsidiary.

The applicant contends that use of the mark by Lennon Ltd, even in the circumstances described above, is not sufficient to protect the first respondent against expungement of the mark in terms of s 36 (1) (b). E Such use, so the applicant argues, does not constitute use by the proprietor and, as it is also not use by a registered user, it is not protected by the provisions of s 48 of the Act.

There is no South African decision to which counsel could refer me, nor which I could find, which is relevant to the issue. Early decisions of F the British Courts favour the stand taken by the applicant. Later decisions, dealing with provisions in the British Act similar to the South African Act as presently worded, support the first respondent. On the other hand, Canadian and Australian decisions are against the first respondent's contentions, but it is argued on behalf of the first respondent that the different wording of the relevant statutory provisions in Canada and Australia render these decisions distinguishable.

G The definition of a 'trade mark', in both the British and the South African Acts, has been broadened with the passage of the years, and the definition in the South African Trade Marks Act 62 of 1963, as amended, H is now...