Barloworld (Pty) Ltd v Promac Paints

• Jurisdiction: South Africa
• Judge: A Tuwe (Mr)
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2329 (TRM)
• Docket Number: 1999/08127

Tuwe:

The Opponent, BARLOWORLD COATINGS (PTY) LTD (previously PLASCON (PTY) LTD) - a paint manufacturing company duly incorporated according to the company laws of the Republic of South Africa (hereinafter called "the Opponent''), brought an application in terms of Section 21 and Regulation 19 of the Trade Marks Act 194 of 1993 (hereinafter referred to as "the Act'') for opposition to the registration of the trade mark No 1999/08127 MICAGUARD. The Opponent is also involved in the supply and marketing of paints.

2015 JDR 2329 p2

Tuwe

The Applicant is PROMAC PAINTS (PTY) - a company duly incorporated according to the company laws of the Republic of South Africa (hereinafter referred to as "the Applicant''). The Applicant's principal business is to manufacture and to supply of decorative coatings/paints.

A change of name of the Opponent from PLASCON (PTY) LTD to BARLOWORLD COATINGS (PTY) LTD and the condonation with the late filing of the Replying Affidavit have been noted.

The opposition is based on the provisions of sub-sections 10(14), 10 (12), 10(3) and 10(7) of the Act.

I will first refer to the allegations in terms of Sections 10(3) and 10(7).

Section 10(3) precludes the registration of a trade mark where the proprietor has no bona fide claim to proprietorship. The word "proprietor'' as used in the Trade Marks Act does not refer exclusively to common law proprietorship since it is possible to seek registration of a trade mark which is proposed to be used [S 2(1) of Act 194 of 1993].

In Tie Rack Plc v Tie Rack Stores (Pty) 1989 (2) SA 427 (T), Kriegler J followed Ltd [1] 2 SA 427 (T) the principles set out in the Philip Morris case to the effect that a proprietor must either have used a mark to the extent that it has acquired a reputation or he must have originated, acquired or adopted the trade mark proposing to use in the future [Webster and Page, p5-6].

In casu, the Opponent contemplates that the Applicant did not, in fact, use the mark MICAGUARD since he did not present any evidence thereof. However, in Oils International (Pty) Ltd v Wm Penn Oils Ltd 165 (3) SA 64 (T), the

2015 JDR 2329 p3

Tuwe

court came to the conclusion that the bona fide choice of a mark is sufficient to entitle the applicant to make a claim to proprietorship.

The Opponent connects the question of good faith on the part of the Applicant with a certain undertaking made by the Applicant not to use the mark MICACOAT or any other marks that are confusingly...