Cowbell AG v ICS Holdings Ltd

• Jurisdiction: South Africa
• Judge: Nienaber JA, Harms JA, Navsa JA, Melunsky AJA and Nugent AJA
• Judgment Date: 16 March 2001
• Citation: 2001 (3) SA 941 (SCA)
• Docket Number: 250/99
• Hearing Date: 26 February 2001
• Counsel: L G Bowman SC (with B du Plessis) for the appellant. O Salmon for the respondent.
• Court: Supreme Court of Appeal

Harms JA:

[1] The appellant applied during 1988 for the registration of the trade mark Cowbell in conjunction with a cow device in class 29. Opposition J

Harms JA

from the respondent, the owner of a number of trade marks in this class, based principally upon the provisions of s 17(1) of the A Trade Marks Act 62 of 1963, led to a finding by the Deputy Registrar in the appellant's favour. This, in turn, gave rise to a successful appeal by the respondent to the Full Court of the Transvaal Provincial Division (per Van Dijkhorst J, Van der Walt J and McCreath J concurring). Hence the present appeal. B

[2] The appeal to this Court was ultimately noted without leave having been obtained from either the Full Court or this Court. Initially, acting on the advice of counsel, the appellant sought leave from the Full Court. The respondent's attitude was that leave was not required. Disagreeing, the appellant proceeded with its application. In the event the Full Court (per Van der Walt J, Van Dijkhorst C J and Kirk-Cohen J concurring) upheld the respondent's point of view and struck the application from the roll with costs.

[3] Because of the delay caused by the abortive proceedings the appellant's notice of appeal was lodged out of time and there is before us an application for condonation. Before dealing with it, it is D necessary to consider whether leave to appeal is a jurisdictional requirement because, although Van der Walt J's judgment is not as such the subject of this appeal, the question remains whether the appeal is properly before us. The Full Court judgment does not bind us. Unfortunately, we did not have the assistance of argument since both E parties assumed that the correctness of that judgment could not be raised in this appeal.

[4] As mentioned, the application for the registration of the trade mark was launched in terms of the 1963 Act which has since been repealed and superseded by the Trade Marks Act 194 of 1993. The latter provides in s 3(2) that F

'[a]ll applications and proceedings commenced under the repealed Act shall be dealt with in accordance with the provisions of that Act as if it had not been repealed'.

The question, simply put, is whether appeal proceedings in relation to an application for registration which commenced under the 1963 Act G should be dealt with in accordance with the provisions of the Act. Before the Full Court it was argued that applications for leave to appeal are procedural steps which should follow the current state of the law. That argument was based upon a wrong premise. An application for leave to appeal, normally a procedural step, is necessary because leave is a jurisdictional requirement. But jurisdictional requirements can hardly be termed 'procedural'. In any event, although as a H general rule procedural steps should follow the current state of the law, that rule has to yield to any contrary intention appearing from the statute in question. In this case it seems to me that the intention of the Legislature was that all applications (including those for registration of trade marks) commenced under the 1963 Act should in all I respects be dealt with thereunder.

[5] This finding leads to a consideration of whether the appellant required leave to appeal under the 1963 Act. Section 63 dealt with the matter. Its scheme was as follows. The decision of the Registrar was J

Harms JA

appealable as if it were a decision of a single Judge, ie to the Full Court of the Transvaal Provincial Division (ss A (2) read with ss (4)(a)). Thereafter an appeal to this Court was available (ss (2)) for which 'special' leave to appeal was not necessary (ss (4)(b)). At the time (1963) the concept of special leave did not exist; it only acquired a particular connotation when ss 20 and 21 of the Supreme Court Act 59 of 1959 were amended by B the Appeals Amendment Act 105 of 1982. Since then civil appeals from the Full Court were made subject to special leave by this Court and the Full Court sitting as a Court of appeal no longer had the competence to grant leave to appeal (s 20(4)(a) of the Supreme Court Act). The application to the Full Court was therefore ill-conceived. Because of s 63(4)(b) read with s 20(6) of the Supreme Court Act, C special leave of this Court was also not required. The appellant thus had an untrammelled right of appeal.

[6] Reverting to the condonation application, the appellant was obliged to file its notice of appeal within one month of the granting of the judgment or order appealed against (SCA Rule 7(1)(a)). Because of its attitude concerning leave to appeal D it was substantially out of time: the judgment was delivered on 4 March 1998 and the notice of appeal filed on 21 June 1999, which was less than two weeks after the judgment of Van der Walt J had become available on 10 June. The respondent refused to agree to an extension of time under Rule 7(4) and filed a lengthy answer. The E respondent no longer opposes the application except on the ground that there are no prospects of success. Since, as will appear in due course, I am of the view that the appeal should succeed, this ground of opposition is without merit. Having acted on the advice of two senior counsel, it cannot be said that the appellant was culpable in having failed to file its notice of appeal in good time and the condonation application must succeed. The matter of costs will be dealt with later. F

[7] After all these preliminaries, attention can now be directed to the...