Bata Ltd v Face Fashions CC and Another

• Jurisdiction: South Africa
• Judge: Smalberger JA, Vivier JA, Nienaber JA, Harms JA and Melunsky AJA
• Judgment Date: 29 September 2000
• Docket Number: 206/98
• Hearing Date: 07 September 2000
• Counsel: C E Puckrin SC (with him J R Peter) for the appellant. M M Jansen SC for the respondents.
• Court: Supreme Court of Appeal

Melunsky AJA:

[1] On 19 November 1997 Meskin J reserved judgment in an opposed application brought by the appellant against the respondent in the Durban and Coast Local Division. Thereafter he prepared a draft of a J

Melunsky AJA

judgment in manuscript. During December 1997, and before judgment A was delivered, the learned Judge was regrettably killed in a motor vehicle accident. In January 1998 the parties to the application agreed to be bound by the draft subject to their rights of appeal. Pursuant to the agreement Broome DJP handed down the late Meskin J's draft as a judgment of the Court and in terms thereof ordered that the application B be dismissed with costs. Some months later Galgut J granted the appellant leave to appeal to this Court against the judgment and order. In the circumstances the appeal is properly before us.

[2] The appellant is a company incorporated under the laws of Canada. It is the proprietor of a number of trade marks which were duly C registered in class 25 under the Trade Marks Act 62 of 1963. For the purposes of the appeal six of the trade marks have relevance, namely:

trade mark B71/4510, consisting of the word 'Power', with date of registration 4 October 1971, in respect of 'all footwear';

trade marks B76/2864 and B76/2866, each consisting of the word D 'Power' and device, with dates of registration 9 June 1976, in respect of 'all footwear';

trade mark 83/4033, consisting of the words 'Power Points', with date of registration 23 June 1983, in respect of 'articles of clothing including footwear of all kinds';

trade mark 84/2701, consisting of the word 'Power', with date of E registration 3 April 1984, in respect of 'articles of clothing';

trade mark B84/4186, consisting of the word 'Power' and device, with date of registration 9 May 1984, in respect of 'clothing, including boots, shoes and slippers'.

Futura Footwear Ltd ('Futura') is a company incorporated under the F company laws of South Africa with its principal place of business in Pinetown, KwaZulu-Natal. It is licensed and permitted by the appellant to use approximately 400 trade marks which the appellant holds, including the six specified above. Futura uses the Power and Power and G device marks on footwear which it both manufactures and imports for resale in South Africa and Southern Africa. It also sells items of clothing on which the said trade marks are displayed.

[3] The second respondent is a member of the first respondent, a close corporation which carries on business in Kloof, KwaZulu-Natal. He is also a member of another close corporation, Power H House CC, which carries on business at the same address as the first respondent. Power House CC is authorised by the first respondent to manufacture and sell clothing under the name 'Power House' or 'Powerhouse', usually, but not invariably, accompanied with a distinctive dog device. The first respondent and Power House CC I have consistently used these trade marks on clothing since 1987 and on 3 July 1997 the first respondent became the registered proprietor of the dog device.

[4] The appellant seeks an order restraining the respondents from, inter alia, making or selling articles of clothing 'bearing the trade marks Power or Power House or Powerhouse'. In addition it sought an order J

Melunsky AJA

interdicting the respondents from passing off the said clothing 'as having an association or being A connected with the business or goods of the [appellant]'.

[5] The issues relied upon on the appellant's behalf in this Court are considerably narrower than those raised in the Court a quo and in the heads of argument which, I add, were not prepared B by the appellant's leading counsel on appeal. In this Court counsel expressly disavowed placing reliance upon passing off and confined his argument to the submission that the respondents had infringed the appellant's trade mark registrations in terms of ss 34(1)(a) and (c) of the Act. A submission that the respondents had infringed the registrations in terms of s 34(1)(b), which was raised in the Court a quo, C was not persisted in on appeal.

[6] Before dealing with the essence of the...