Broadway Pen Corporation and Another v Wechsler & Co (Pty) Ltd and Others

• Jurisdiction: South Africa
• Judge: Trollip J
• Judgment Date: 21 August 1963
• Court: Transvaal Provincial Division
• Citation: 1963 (4) SA 434 (T)

Trollip, J.:

This an application by first applicant (herein called 'Broadway') and second applicant (referred to herein as 'Max Frank') D against the first respondent (called 'Wechsler') and second respondent (referred to as 'Unic') for the rectification of the Register of Trade Marks under sec. 135, or alternatively sec. 136, of the Trade Marks Act, 9 of 1916 (as amended), by the expungment from the Register of the trade mark 'Everglide' registered on the 18th December, 1959, in the name of E Wechsler in class 39 in respect of writing instruments. This trade mark was assigned to Unic with effect from the 1st February, 1961, the assignment being registered on the 29th June, 1961. The Registrar of Trade Marks was joined as a further respondent with his consent after the proceedings had been launched, following upon the decision in this Court in the Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars, 1963 (2) SA 10 (T) at p. 19 B to p. 20 G.

F Originally the application was drafted and signed as against Wechsler only (that petition being referred to herein as 'the first petition'); but thereafter Broadway became aware of the assignment of the trade mark to Unic with the result that a further application was then prepared G (herein called 'the second petition') which incorporated the first petition and its documents and joined Unic as the second respondent.

Both in the affidavits filed on behalf of the respondents and in argument on their behalf it was contended that, because of the assignment, Wechsler had been misjoined as a respondent. That issue will be dealt with later in this judgment.

H The history of the trade mark in dispute is briefly as follows. It was originally registered on the 11th March, 1952, in the United States of America in class 39 for fountain pens in the name of Robert J. Burnham Inc. On the 26th December, 1956, it was assigned to Burnham Products Corporation (herein called 'Burnham'), the assignment being recorded on the 4th January, 1957. Burnham and Broadway are both subsidiaries of Scripto Inc. All these are U.S.A. corporations. For a number of years Broadway has manufactured ballpoint pens and other writing instruments in the U.S.A. under the trade mark 'Everglide'. A

Trollip J

part of such output was sold to Burnham which was the sole distributor of these instruments under that trade mark in the U.S.A. It was alleged that the remainder of Broadway's output was exported or sold for export by Broadway to countries outside the U.S.A., and that in those export A markets those writing instruments were also sold under the mark 'Everglide'.

Broadway also alleged that prior to the registration of the trade mark in Wechsler's name on the 18th December, 1959, indeed from about October, 1956, writing instruments manufactured by it were supplied to B New York shippers for export to South Africa and that they were in fact exported to South Africa in increasing quantities from then onwards. The details of these transactions are set out in the first petition and they purport to be supported by the relevant order forms and invoices which form a bulky part of the record. Wechsler in reply thereto averred that the information, documentary and otherwise, regarding these transactions in relation to South Africa was, for C various reasons, hearsay evidence and therefore inadmissible. Unic adopted those averments, and at the hearing similar submissions in argument were made.

It is necessary to deal with that issue at the outset. The verifying affidavit to the first petition was signed by a Mizzi Burnham who D testified that she was the president of Broadway and that the statements and allegations contained in the first petition were true and correct to the best of her knowledge and belief. In paras. 6 and 9 of the first petition it was stated that the remaining output of Broadway was exported or sold for export to countries outside the U.S.A. and that in E these export markets the writing instruments were sold under the mark 'Everglide'; and that such instruments had for some years been marketed in South Africa as well as in other countries outside the U.S.A.; furthermore that for protection in those countries of the mark, Broadway had relied upon its rights of user, and in certain other countries had F applied for registration of the mark in its name. Those were general statements as to Broadway's activities and it seems clear that in affirming those statements in her verifying affidavit, the deponent was speaking from her personal knowledge thereof as a senior executive of Broadway, and that those statements were therefore not hearsay evidence.

G Relying on those facts the agent of Broadway, who signed and presented the second petition, repeated allegations to the same effect in paras. 6 and 7 of the second petition. In replying to those facts and allegations Wechsler, in the replying affidavit filed on its behalf, stated as follows (in so far as is relevant):

'Ad para. 6. First respondent says Burnham Products Corporation is the H proprietor of the mark Everglide in the United States of America and that that mark is registered in its favour under No. 533/1945 and the said mark does not belong to the first applicant.

First respondent admits that first applicant manufactures ball point pens for supply to Burnham Products Corporation and for sale by that Corporation under its trade mark in America. It is denied that the first applicant manufactures them 'under the trade mark Everglide' save as aforesaid.

As to the remainder of the first applicant's output, first respondent does not deny that it is exported to various 'export markets' and the first respondent is aware that on occasion the name of Burnham Products Corporation has figured upon such goods in association with the mark Everglide. Also it is not disputed

Trollip J

that since the registration of the mark Everglide in South Africa in favour of the first respondent (hereinafter more fully referred to) the first applicant may have made some use of the mark Everglide, though applicants are put to the proof thereof. Save as aforesaid it is denied by the first respondent that the goods are sole 'under the trade mark A Everglide' as identifying the first applicant's products or as identifying the mark as that of the first applicant, or as indicating that the first applicant is the proprietor thereof. It is denied that the first applicant is the proprietor of the mark in the Republic of South Africa or anywhere else that may be relevant. Applicants are put to the proof thereof.

Ad para. 7. First respondent repeats the foregoing paragraphs hereof and denies that the first applicant is the proprietor of any trade mark Everglide or that it has acquired any rights thereto by usage in South Africa.'

B Unic merely adopted Wechsler's reply.

I do not think that by those and other replies the respondents disputed that writing instruments with the mark 'Everglide' had been exported to South Africa 'for some years' as stated on behalf of Broadway. They did not deny that Burnham had used the mark on its goods in South Africa; C they merely disputed that Broadway had used it on its (the latter's) goods here, a contention that will be dealt with presently. As a result of the respondents' affidavits contending that the statements of the transactions relating to South Africa were hearsay, one Schweyer, a director of Max Frank, filed an answering affidavit in which he testified as follows:

'Depondent averred in annexure II to the petition that he had personal D knowledge that the first applicant had first initiated the use of its mark 'Everglide' in the then Union of South Africa prior to 1956 and had since that year continuously exported writing instruments under the trade mark 'Everglide' to the Union of South Africa. In so far as such averment appears to be challenged in sub-para. 9 (a) of first respondent's affidavit, deponent avers that he has been associated actively in the business of stationery, writing instruments and materials both as a buyer and distributor thereof since 1931 and that E he, on behalf of his company, has since that date carried out the work of the agents of A. W. Faber of Stein Nuremberg, the manufacturers of Castell pencils and has a thorough knowledge of the writing instrument trade in this country.

The deponent avers that to his knowledge substantial quantities of ball point pens bearing the mark 'Everglide' have been placed on the market in this country by the first applicant since 1958.'

F That statement was not disputed by the respondents' seeking to file any additional affidavit in reply thereto.

Furthermore, it appears from the papers that after Broadway first learnt of the registration of the trade mark in Wechsler's name, its attorneys wrote to Wechsler on the 7th June, 1960 (annexure K) claiming cancellation of that registration. In putting forward that claim the attorneys averred:

G 'Our clients first initiated use of their trade mark 'Everglide' in the Union of South Africa prior to 1956, and since that date have continuously exported writing instruments under the trade mark 'Everglide' to the Union.'

That statement was not denied in the replies thereto by Wechsler on the 11th June, 1960 (annexure L) or in their attorneys' and agents' letter H of the 13th June, 1960 (annexure B); in fact the correctness of that statement seems to have been assumed in both letters.

The respondents through their counsel intimated at the hearing that they did not require the deponents for Broadway to be called for cross-examination on the above aspects. It was contended that as Broadway stated in its petitions that the writing instruments were sold in the U.S. to shippers for export to South Africa, the user in South Africa of the mark was not by Burnham or Broadway but by the shippers or importers, but there is no substance in that contention...