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

• Jurisdiction: South Africa
• Citation: 2000 (2) SA 771 (SCA)

Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another
2000 (2) SA 771 (SCA)

2000 (2) SA p771

Citation	2000 (2) SA 771 (SCA)
Case No	573/97
Court	Supreme Court of Appeal
Judge	Vivier JA, Harms JA, Marais JA, Streicher JA, Farlam AJA
Heard	February 27, 2000
Judgment	March 16, 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).

Flynote : Sleutelwoorde

Trade mark — Trade marks register — Rectification of — By entry of disclaimer against trade mark — Trade Marks Act 194 of 1993, s 15 — Whether matter in trade mark 'not capable of distinguishing within the meaning of s 9' — Date to be used in determining whether such matter capable of distinguishing — In determining whether trade C mark to be registered with or without disclaimer, Registrar or Court concerned with date of application for registration — But where question is whether trade mark to remain registered in present form, date of registration no longer relevant — Court then concerned with time when it has to decide in what form trade mark shall remain on register. D

Trade mark — Trade marks register — Rectification of — By entry of disclaimer against trade mark — Trade Marks Act 194 of 1993, s 15 — Expression, referring to Registrar or Court, 'in deciding whether the trade mark . . . shall remain on the register' — Necessary implication of expression that provision not only concerned with question whether trade mark should remain on register E but also whether it should remain in its present form.

Trade mark — Trade marks register — Rectification of — By entry of disclaimer against trade mark — Trade Marks Act 194 of 1993, s 15 — Application for entry of disclaimer against 'Liquorice Allsorts' trade mark that registration not giving right to exclusive use of name 'Liquorice Allsorts' separately and apart from mark — Owner of trade mark not entitled to exclusive use of 'Liquorice F Allsorts' as it was used by owner and others to describe product and not to distinguish owner's product from that of others — Whether Court should exercise discretion against granting disclaimer — No reason why applicant should be put to trouble and expense of first manufacturing and selling product and then subjected to risk of G

2000 (2) SA p772

infringing litigation where Legislature has given it a simple remedy akin to declaration of A rights to obtain certainty — Application granted.

Headnote : Kopnota

The appellant had applied in a Provincial Division for an order for the entry of an additional disclaimer against the registration of the first respondent's trade mark under the name 'Liquorice Allsorts' to B the effect that the registration 'shall also give no right to the exclusive use of the name ''Liquorice Allsorts'', separately and apart from the mark'. The validity of the original registration of the trade mark in 1986 was not attacked. The appellant relied on s 15 of the Trade Marks Act 194 of 1993 which provided that, if a trade mark contained matter which was not capable of distinguishing within the meaning of s 9, a Court might require that the proprietor disclaim any right to the exclusive use of such matter and contended that 'Liquorice Allsorts' was descriptive of the product and therefore not C capable of distinguishing in the trade mark law sense. The Provincial Division refused the application but granted leave to appeal to the Supreme Court of Appeal.

On appeal the respondent contended (1) that, since s 9(2) referred to the date of application for registration (ie 1986), the Court, after registration, could only rectify the registration by means of a disclaimer under s 15 if, at the date of application for D registration 'Liquorice Allsorts' was not capable of distinguishing, that the original registration was not under attack and that there was no evidence concerning the position in 1986; and (2) that s 15 did not apply to the facts in the present case as in a post-registration situation the section was restricted to a case where the Court was E called upon to decide whether the trade mark 'shall remain on the register' and that, since the Court a quo had not been called upon to decide whether the trade mark should remain on the register, but only whether or not a disclaimer had to be entered, it had no jurisdiction to consider the application.

Held, as to (1), that the object of s 9 was to provide a test for the registrability of a trade mark upon application and for F that reason the date upon which the question had to be determined was set as the application date. Section 15 was, however, concerned with two situations: the one was where the Registrar or the Court had to determine whether the trade mark should be registered with or without a disclaimer and in this event they would likewise be concerned with the date of application for registration. But if the question was (as in this case) whether the trade mark should remain registered in its G present form, the date of registration could no longer be relevant. This was apparent from the wording of s 15 itself: it was phrased in the present tense and concerned itself with matter which was not capable of distinguishing at the time when the Court had to decide in what form the mark should be entered or remain on the register. (Paragraph [6] at 777D - F.) H

Held, further, as to (2), that one would have expected some or other motivation for such a purely procedural limitation to be apparent, but none sprung to mind. The phrase 'in deciding whether the trade mark . . . shall remain on the register' had a venerable ancestry, going back to at least s 15 of the Trade Marks Act 1905 (5 Edw 7, c 15). No authority which has interpreted the phrase in the manner contended for had been referred to and it seemed that it was a I necessary implication that the provision was not only concerned with the question whether the trade mark should remain at all on the register but also whether it should remain in its present form. (Paragraph [7] at 778E - F/G.)

Held, further, as to the merits, that the respondent was not entitled to the exclusive use of 'Liquorice Allsorts' because it was used by the respondent J

2000 (2) SA p773

and others in the trade to describe the product and not to distinguish the respondent's product from that of A others. (Paragraph [12] at 780F - F/G.)

Held, further, as to the question whether the Court should exercise its discretion against the grant of order for the entry of the disclaimer, that the appellant should not be put to the trouble and expense of first manufacturing and selling its product and then be subject to the risk of infringement litigation where the Legislature has given it a simple remedy akin to a declaration of rights to obtain B certainty: although due to the proviso to s 15 the respondent might nevertheless attempt to assert its rights to 'Liquorice Allsorts' by means of a common-law action based on passing-off, that was not sufficient reason to refuse the relief sought since the nature of the protection provided by that action differed from trade mark protection. (Paragraph [14] at 781C/D - E/F.) Appeal allowed. C

The decision in the Transvaal Provincial Division in Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd and Another 1998 (1) SA 59 reversed.

Cases Considered

Annotations:

Reported cases

Antec International Ltd v South Western Chicks (Warren) Ltd [1997] FSR 278: compared D

Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd and Another 1998 (1) SA 59 (T): reversed on appeal

Distillers Corporation (SA) Ltd v Stellenbosch Farmers Winery Ltd 1979 (1) SA 532 (T): dictum at 539B - C applied

Estee Lauder Cosmetics Ltd v Registrar of E Trade Marks 1993 (3) SA 43 (T): dictum at 45F - G applied

Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A): considered

Media Workers Association of South Africa and Others v Press Corporation of South Africa Ltd ('Perskor') 1992 (4) SA 791 (A): compared

Philip Morris Inc's Trade Mark Application [1980] RPC 527 considered

Wagamama Ltd v City Centre Restaurants plc and Another [1995] FSR 713 (Ch): dictum at 728 - 9 applied. F

Statutes Considered

Statutes

The Trade Marks Act 194 of 1993, ss 9, 15: see Juta's Statutes of South Africa 1998 vol 2 at 2-237 - 2-239.

Case Information

Appeal from a decision in the Transvaal Provincial Division G (Maritz AJ), reported at 1998 (1) SA 59. The facts apear from the judgment of Harms JA.

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 H Marks).

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

Adcock-Ingram Laboratories Ltd v SA Druggists Ltd 1983 (2) SA 350 (T) at 354G - H I

Baldwin and Francis' Application (1959) 75 RPC 221 at 231

Blockbuster Entertainment Corporation v Registrar of Trade Marks 1994 (3) SA 402 (T) at 405G - 406C

De Villiers en 'n Ander v Stadsraad van Mamelodi en 'n Ander 1995 (4) SA 347 (T) at 354C - E J

2000 (2) SA p774

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