Arjo Wiggins Ltd v Idem (Pty) Ltd and Another

• Jurisdiction: South Africa

Arjo Wiggins Ltd v Idem (Pty) Ltd and Another
2002 (1) SA 591 (SCA)

2002 (1) SA p591

Citation	2002 (1) SA 591 (SCA)
Case No	69/2000
Court	Supreme Court of Appeal
Judge	Nienaber JA, Harms JA, Cameron JA, Navsa JA and Froneman AJA
Heard	September 10, 2001
Judgment	September 28, 2001
Counsel	C E Puckrin SC (with J N Cullabine) for the appellant.; R M Robinson for the first respondent.; No appearance for the second respondent.

Flynote : Sleutelwoorde G

Trade mark — Expungement of — Application for expungement on grounds of lack of bona fide use — Trade Marks Act 194 of 1993, H s 27 — Absence of intention to trade commercially in particular goods in respect of which trade mark registered renders use of trade mark statutorily inauthentic — Use of trade mark on goods other than with object of promoting trade in those goods thus not constituting bona fide use for statutory purposes, even if such use promotes trade in other goods — Even if use of trade mark on promotional I goods 'commercial', in sense of promoting other goods in which proprietor trades, such use not commercial use in relation to goods on which trade mark displayed as such goods not being traded.

Trade mark — Expungement of — Application for expungement on grounds of lack of bona fide use — Trade Marks Act 194 of 1993, s 27 — Ambit of J

2002 (1) SA p592

expungement — Essential issue being in what expungeable category of goods non-use shown — Where trade mark proprietor showing A relevant use within category of goods, removal not to be ordered unless evident to Court, or applicant for expungement laying foundation for suggesting, that ambit of expungement sought describing a commercially coherent category of goods within existing specification — Trade mark registered in respect of 'paper, paper articles, cardboard, cardboard B articles and paper stationery' — Trade mark proprietor proving relevant use of mark only on carbonless copying paper — Proprietor seeking to retain registration for specification embracing 'paper and paper articles' — Description of proprietor's goods as 'carbonless' and 'copying' merely attributes qualifying 'paper' — No indication that carbonless copying paper commercially quite different from other sorts of paper — Proprietor thus proving C relevant use within protected category — Nothing to show that sustaining registration in respect of that category not making commercial sense.

Headnote : Kopnota

Section 27 of the Trade Marks Act 194 of 1993 permits the removal of a trade mark from the register of trade marks on the grounds of lack D of bona fide use. It has been accepted by the Courts that, whatever the trade mark proprietor's actual motive, inauthenticity of statutory purpose is established by an absence of commercial trade in the article on which the trade mark is used. (Paragraph [9] at 599F/G - G/H.) Since the absence of intention to trade commercially in the particular goods in respect of which the trade mark is registered E renders use of the trade mark statutorily inauthentic, it must follow that use of a trade mark on goods other than with the object of promoting trade in those goods cannot constitute bona fide use for statutory purposes, even if that use promotes trade in other goods. It follows from that that, even if a trade mark proprietor's use of the trade mark on promotional goods is 'commercial', in that it promotes goods in which the proprietor trades, such use is not F commercial in relation to the goods on which it is displayed, since those goods are not being traded. And while the use of the trade mark on those promotional goods is use in order to distinguish them from similar goods of others, that use is not for the purpose of trading in the promotional goods but for the purpose of trading in other goods. (Paragraph [11] at 600D - F.) G

The appellant was the proprietor in South Africa of the registered trade mark 'Idem' in respect of 'paper, paper articles, cardboard, cardboard articles and paper stationery'. The respondent's application in a Provincial Division in terms of s 27 of the Act for the expungement of the appellant's mark from the register of trade marks in respect of all goods other than 'carbonless paper, namely specialised paper whose purpose it is to perform the same function as H carbon paper because of its special characteristics' succeeded.

In an appeal the Court confirmed the finding of the Court a quo that the appellant had failed to establish bona fide use in relation to goods other than carbonless copying paper. The appellant nonetheless challenged the narrow ambit of the specification of the registration sought by the respondent and argued for a specification embracing 'paper and paper articles'. The I respondent opposed this on the grounds that such a specification would include commodities beyond the appellant's proven trade.

Held, that the difficulties in defining the limits of the registration to which the appellant was entitled sprang from the incontestable fact that it had proved statutorily relevant use of its trade mark on 'paper', albeit a sub-set of paper, but paper nonetheless, since the description of its trade goods as 'carbonless' J

2002 (1) SA p593

and 'copying' were merely attributes qualifying a commodity, and that A commodity was protected by the registration sought to be expunged. (Paragraph [16] at 601H/I - I/J.)

Held, further, that there was nothing to indicate that carbonless copying paper was commercially quite different from other sorts of paper, nor was there anything to suggest that, commercially, it would be nonsensical to maintain registration of the Idem mark for paper in general, even though it was used only for carbonless copying B paper. (Paragraph [19] at 603B/C - C/D.)

Held, further, even accepting that an applicant for expungement was prima facie entitled to removal of a trade mark from the register once non-use of a category of goods was shown, the question to be answered before the Court could determine the ambit of the expungement sought was in what expungable category of goods had C non-use been shown. (Paragraph [20] at 604A - C.)

Held, accordingly, that unless it was evident to the Court (or unless the applicant for expungement laid a foundation for suggesting) that the expungement sought described a commercially coherent category of goods within the existing specification, the relief sought by the applicant could not be granted if the trade mark D proprietor had proved relevant use within the category. In this instance the appellant had proved relevant use of its trade mark within a protected category and there was nothing to show that sustaining its registration in respect of that category would not make commercial sense. (Paragraph [21] at 604C - D/E.) Appeal allowed.

The decision in the Transvaal Provincial Division in Idem (Pty) Ltd v Arjo Wiggins Ltd and Another confirmed in part and varied in E part.

Cases Considered

Annotations

Reported cases

Distillers Corporation (SA) Ltd v SA Breweries Ltd and Another; Oude Meester Groep Bpk and Another v SA F Breweries Ltd 1976 (3) SA 514 (A): considered

Electrolux Ltd v Electrix Ltd and Another (1954) 71 RPC 23 (CA): considered

Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk 1963 (2) SA 10 (T): discussed, approved and dictum at 24D - E approved

Imperial Group Ltd v Philip Morris Ltd [1982] FSR 72 (CA): referred to G

Kodiak Trade Mark [1990] FSR 49 (Ch): compared and applied

McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another; McDonald's Corporation v Dax Prop CC and Another; McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Dax Prop CC 1997 (1) SA 1 (A): dictum at 29 - 30 applied

Mercury Communications Ltd v Mercury Interactive (UK) Ltd [1995] FSR 850 (Ch): considered H

Minerva Trade Mark [2000] FSR 734 (Ch): compared and applied

Oude Meester Groep Bpk and Another v SA Breweries Ltd; SA Breweries Ltd and Another v Distillers Corporation (SA) Ltd and Another 1973 (4) SA 145 (W): considered I

Rembrandt Fabrikante en Handelaars (Edms) Bpk v Gulf Oil Corporation 1963 (3) SA 341 (A): considered.

Statutes Considered

Statutes

The Trade Marks Act 194 of 1993, s 27: see Juta's Statutes of South Africa 2000 vol 2 at 2-239. J

2002 (1) SA p594

Case Information

Appeal from a decision in the Transvaal Provincial Division (Hartzenberg J). The facts and nature of the issues appear from the A judgment of Cameron JA.

C E Puckrin SC (with J N Cullabine) for the appellant.

R M Robinson for the first respondent.

No appearance for the second respondent. B

In addition to the authorities cited in the judgment of the Court, counsel for the parties referred to the following:

Abbott Laboratories v UAP Crop Care (Pty) Ltd 1999 (3) SA 624 (C)

Abdulhay M Mayet Group (Pty) Ltd v Renasa Insurance Co Ltd 1999 (4) SA 1039 (T) C

Beecham Group plc v Southern Transvaal Pharmaceutical Pricing Bureau (Pty) Ltd 1993 (1) SA 546 (A) at 554H

Berman Brothers (Pty) Ltd v Sodastream Ltd and Another 1986 (3) SA 209 (A) at 236G - I

Bostitch Trade Mark [1963] RPC 183 at 197

Bowden Wire Ltd v Bowden Brake Co Ltd (1914) RPC 385 at 389 D

Bravado Merchandising Services Ltd v Mainstream Publishing Edinburgh Ltd [1996] FSR 205 at 211 - 12 in fin

British Sugar (Pty) Ltd v James Robertson & Sons Ltd [1996] RPC 281 at 298 lines 9 - 28

Concord Application [1987] FSR 209 E

Contrapest Holdings SA (Pty) Ltd v Ecolan Inc [1998] BIP 217 (T)

GE Trade Mark [1970] RPC 339 (CA) at 367 line 5 - 373 line 4

GE Trade Mark [1973] RPC 297 (HL) at 324 line 31 - 336 line 30

Glaxo Group v Dowelhurst Ltd (No 1) [2000] FSR 529 at 539 - 43

Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A) at 24B - 26B F

Mars Incorporated v Cadbury (Swaziland) (Pty) Ltd 1998...