Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another

• Jurisdiction: South Africa
• Judge: Vivier JA, Harms JA, Marais JA, Streicher JA, Farlam AJA
• Judgment Date: 16 March 2000
• Citation: 2000 (2) SA 771 (SCA)
• Docket Number: 573/97
• Hearing Date: 27 February 2000
• Counsel: C E Puckrin SC (with him J N Cullabine) for the appellant. L G Bowman SC (with him B du Plessis) for the first respondent. No appearance for the second respondent (the Registrar of Trade Marks).
• Court: Supreme Court of Appeal

Harms JA: C

[1] This appeal relates to an application by the appellant (Cadbury) to rectify the trade marks register by having a disclaimer entered against a trade mark registered in the name of the respondent (Beacon). The Court a quo (Maritz AJ) refused the D application for a number of reasons but granted the necessary leave to appeal to this Court. Its judgment was reported: 1998 (1) SA 59 (T).

[2] Both Cadbury and Beacon are manufacturers and distributors of sweets and confectionery. The present dispute relates to trade mark 86/3570, registered in class 30 in respect of confectionery, sweets, E chocolates, candy, sweetmeats, ices and ice-cream. The mark is a composite mark. It was amended and in its present form consists in the main of a plate of sweets of the kind that have been marketed extensively by Beacon since 1952 under the name Liquorice Allsorts, a little man made of these sweets, a blank space and a prominent display of the name Liquorice Allsorts: F

The mark is registered subject to the following disclaimer:

'Registration of this trade mark shall give no right to the exclusive use of the J

Harms JA

sweet device [the plate], separately and apart from the mark. A

The applicant undertakes that, in use, the blank space shall be occupied only by matter of a wholly descriptive or non-distinctive character, or by a trade mark registered in the name of the applicant in respect of the same goods, or by a trade mark of which the applicant is a registered user in respect of the same goods, or by a trade mark of a registered user with the consent of the proprietor of such a mark B or the blank space will be left vacant.

The applicant undertakes that in use the trade mark will only be used in respect of goods containing or including liquorice or liquorice flavour.'

[3] Contending that the name Liquorice Allsorts is descriptive of the product and therefore not capable of distinguishing in the trade mark law sense, Cadbury applied, without attacking the C validity of the original registration of the trade mark, for an additional disclaimer, namely that the registration 'shall also give no right to the exclusive use of the name Liquorice Allsorts, separately and apart from the mark'. (The relief sought in the notice of motion was arguably more extensive, but nothing turns on it.) For this Cadbury relied upon s 15 of the Trade Marks Act 194 D of 1993 which, simply put for present purposes, provides that, if a trade mark contains matter which is not capable of distinguishing within the meaning of s 9, a Court may require that the proprietor disclaim any right to the exclusive use of such matter. [1]

[4] Section 15 is not concerned with the question whether a trade E mark itself is incapable of distinguishing, but whether matter contained in a trade mark lacks this capability. This is illustrated by the existing disclaimer concerning the sweets device which was entered under a somewhat similar provision in the repealed Trade Marks Act 62 of 1963 (s 18). That the term Liquorice Allsorts is F 'matter' within the meaning of that word in s 15 of the current Act is not an issue. The issue is rather whether or not it is capable of distinguishing within the meaning of s 9. Section 9 provides:

'(1) In order to be registrable, a trade mark shall be capable of distinguishing the goods or services of a person in respect of which it G is registered or proposed to be registered from the goods or services of another person either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within those limitations.

Harms JA

(2) A mark shall be considered to be capable of distinguishing within A the meaning of ss (1) if, at the date of application for registration, it is inherently capable of so distinguishing or it is capable of distinguishing by reason of prior use thereof.'

[5] Since s 9(2) refers to the date of application for registration (in this case, 1986) Beacon argues that a Court, after registration, may only rectify the registration by means of a disclaimer under s 15 B if, at the date of application for registration, Liquorice Allsorts was not capable of distinguishing. Beacon points out that the original registration is not under attack and that, although some reference to dictionaries predating that year was made, there is no evidence concerning the position in 1986. Cadbury, on the other hand, submits that the reference to s 9 does not include a reference to the C date of application for registration; the Court should be concerned with the capability of the matter to distinguish at the date of Cadbury's application for rectification, namely 1997.

[6] Although superficially attractive, Beacon's argument does not bear scrutiny. The object of s 9 is to provide a test for the D registrability of a trade mark upon application. For that reason the date upon which the question has to be determined was set as the...