Analyses: The 'Seven-year Clause' Defence and the Limited Operation, under Section 70(1) of the Trade Marks Act 194 of 1993, of Section 42 of the Trade Marks Act 62 of 1963

• Jurisdiction: South Africa
• Citation: (2007) 19 SA Merc LJ 486
• Pages: 486-491
• Date: 16 August 2019
• Published date: 16 August 2019
• Author: Stuart Gardiner

The ‘Seven-year Clause’ Defence and the

Limited Operation, under Section 70(1) of the

Trade Marks Act 194 of 1993, of Section 42 of

the Trade MarksAct 62 of 1963

STUART GARDINER

Attorney, Stellenbosch

1 Introduction

The provisions of s 42 of the Trade Marks Act 62 of 1963 (the ‘1963 Act’),

in which the ‘seven-year clause’ is included, has been relied upon in a number

of cases decided after the enactment of the Trade Marks Act 194 of 1993 (the

‘1993 Act’), as providing an absolute defence to applications for the

expungement of registered trade marks from the Trade Marks Register of

marks with a registration date seven years or more prior to the date of the

enactment of the 1993 Act (see Luster Products Inc v Magic Style Sales CC

1997 (3) SA 13 (A); Mars Inc v Cadbury (Swaziland) (Pty) Ltd 2004 (4) SA

1010 (SCA); Reckitt Benckiser SA (Pty) Ltd v Adcock Ingram Healthcare

(Pty) Ltd unreported, TPD, case no 15717/2004, 11 Mar 2003; Die Bergkelder

Bpk v Vredendal Koöp Wynmakery & Others 2006 (4) SA 275 (SCA)).

This note considers the parameters of the defence currently provided by

s 42 of the 1963 Act.

2 Legislation

The 1963 Act was repealed by the 1993 Act which came into force on 1

May 1995. The transitional provisions of the 1993 Act maintained the

applicability of section 42 of the 1963 Act in a limited way (Mars v Cadbury

(2007) 19 SA Merc LJ

486

(2007) 19 SA Merc LJ 486

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