Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another

• Jurisdiction: South Africa
• Citation: 1991 (4) SA 850 (A)

Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another
1991 (4) SA 850 (A)

1991 (4) SA p850

Citation	1991 (4) SA 850 (A)
Court	Appellate Division
Judge	Corbett CJ, Botha JA, F H Grosskopf JA, Nienaber JA and Nicholas AJA
Heard	August 29, 1991
Judgment	September 26, 1991

Flynote : Sleutelwoorde

Trade and trade mark — Trade mark — Expungement of — From register in terms of s 33(1) of Trade Marks Act 62 of 1963 — Locus standi of C applicant — Requirement that applicant be 'person aggrieved' by entry on register of mark sought to be expunged — Approach of Court to issue of locus standi (as opposed to success on merits) flexible — Test is whether applicant proving, as reasonable possibility, that he has D particular interest in removal of targeted mark — Since targeted mark assumed, for purposes of issue of locus standi, to be wrongly on register, applicant's prospects of success on merits material to issue of locus standi only in sense that respondent entitled to seize upon futility of applicant's case on merits in order to show lack of any real interest in removal of targeted mark.

E Trade and trade mark — Trade mark — Expungement of — From register in terms of s 33(1) of Trade Marks Act 62 of 1963 — Locus standi of applicant — Requirement that applicant be 'person aggrieved' by entry on register of mark sought to be expunged — Applicant seeking to register mark identical to respondent's mark already registered in same F class — For as long as respondent's mark remains on register, such mark serving as complete bar to applicant's application for registration in same class — Applicant thus having direct interest in having respondent's mark expunged — Applicant therefore a 'person aggrieved' by entry of blocking mark on register and thus having locus standi to G apply for expungement — Semble: Makes little difference whether blocking mark attacked on basis of non-use or not, or that proposed registration being blocked is defensive registration — It is decisive that one party's proposed mark is blocked by other party's existing mark, which latter mark is assumed, for purposes of issue of locus H standi, to be wrongly on register.

Trade and trade mark — Trade mark — Expungement of — From register in terms of s 33(1) of Trade Marks Act 62 of 1963 — On grounds that use by respondent of mark (registered in one class) identical to that of applicant registered in another class offending against provisions of s I 17(1) of Act — Onus on applicant to establish, on balance of probabilities, that notional use of mark, in fair and normal fashion would, more likely than not, be deceptive or at least confusing in regard to source of respective goods.

Headnote : Kopnota

An applicant for the expungement of a trade mark from the register of trade marks under s 33(1) of the Trade Marks Act 62 of 1963 bears the J onus of showing that he is 'a

1991 (4) SA p851

A person aggrieved' by the entry of the mark on the register of trade marks, and that he therefore has locus standi to bring the application. At that stage of the proceedings (ie on the issue of locus standi, as opposed to success on the merits) the approach of the Court is flexible rather than rigid, and the test is whether the applicant has proved, as a reasonable possibility, that he has a particular interest in the removal of the targeted mark from the register. Since the issue is locus standi to make the application and not entitlement to the order sought, B and since the offending mark is assumed to be wrongly on the register, the applicant's prospects of success on the merits are material only in the sense that it remains open to a respondent in rebuttal to seize upon the futility of the applicant's case on the merits in order to show that he lacks any real interest.

The appellant had been the registered proprietor of two 'French Connection' trade marks in class 25 of the register in respect of clothing since 1980 and 1983 respectively. In 1987 the respondent became C the proprietor of the identical 'French Connection' mark in class 3 of the register in respect of, broadly, cosmetics and toiletries. The appellant had built up a substantial reputation for its 'French Connection' clothing, which was sold through national chain stores with numerous branches throughout the country. During late 1986 the appellant had decided, in line with a trend started by well-known European-based clothing designers and manufacturers, to expand its business into the D field of cosmetics, toiletries and perfumery, which it proposed selling under the 'French Connection' label. Its statement that members of the buying public had generally come to associate particular brands of 'cosmetics, perfumery, toiletries or sun-tan preparations with clothing bearing the same trade mark' was supported by similar views expressed by the merchandise directors of three chain stores, and was not controverted by any evidence from the respondent.

During May 1987 the appellant had discovered the respondent's then pending application for registration of the 'French Connection' mark in E class 3 of the register. Not wishing to become embroiled in litigation, the appellant tried to purchase the mark from the respondent. It was only in October 1987 that the appellant was informed by the respondent's attorneys that the respondent had refused to assign the mark. The appellant had been unaware that the acceptance of the respondent's mark had been advertised in November 1987 and that the period for objection thereto would expire on 25 January 1988. On 7 June 1988 the appellant F applied for the registration of the 'French Connection' mark in class 3 of the register and on 16 November 1988 it launched the expungement proceedings in a Provincial Division. That Court had found that the appellant had failed to prove, on a balance of probabilities, a serious or definite intention to expand its activities into a field where it would become a trade rival to the respondent. On those grounds, the respondent's objection in limine to the appellant's alleged lack of locus standi had been upheld. G

As to the merits, the application for expungement had been brought on the grounds that the use by the respondent of the identical mark offended against the provisions of, inter alia, s 17(1) of the Act in that its use in relation to cosmetics was likely to deceive or cause confusion in view of the use by the appellant, in relation to clothing, of its earlier marks registered in class 25. The appellant's evidence as to the likelihood of confusion, which was supported by similar evidence from prominent and knowledgeable persons in the retail trade, was that H clothing, on the one hand, and cosmetics, toiletries, perfumery and sun-tan preparations, on the other hand, were sold in close proximity and through the same trade channels such as large departmental and clothing stores; that customers at retail stores of that kind would, as a matter of course, associate a mark on cosmetics with the identical mark on well-known and popular brands of clothing; and that the appellant's mark on clothing had indeed been well known and popular in 1985. On appeal, I

Held, that, while the appellant might not have been as diligent as it should perhaps have been in pursuing and protecting its interests in the cosmetics field, the evidence had disclosed a reasonable possibility that the appellant had intended to expand its business in the manner alleged by it: the trend described by the appellant and others in the trade had made it not unlikely that the appellant would decide to diversify and broaden its market; and it had indeed taken steps to J implement its decision to do so.

1991 (4) SA p852

A Held, further, that, as the test at the stage where locus standi was in issue was proof, as a reasonable possibility, of a particular interest in the removal from the register of a targeted mark, that the appellant had had locus standi to bring the application.

Held, further, since for as long as the respondent's identical mark remained on the register, it would serve as a complete bar to the appellant's application for registration in the same class, that the appellant for that reason had a direct interest in having it expunged - for that reason too, therefore, the appellant was a person aggrieved and B had locus standi.

Semble: It makes little difference whether a blocking mark is attacked on the basis of non-use or not, or that the proposed registration being blocked is a defensive registration: what is decisive is that one party's proposed mark is blocked by the other party's existing mark which, for good measure, is assumed to be wrongly on the register.

The dicta in Mars Incorporated v Candy World (Pty) Ltd 1991 (1) SA 567 (A) C at 574J-575A and 575G and in Ritz Hotel Ltd v Charles of the Ritz Ltd and Another 1988 (3) SA 290 (A) at 308A-E applied.

Held, further, as to the merits, that, for the purposes of comparison, use of the mark by both parties concerned was to be postulated, and that the issue was whether such a postulated and fair use by the respondent of the 'French Connection' mark in relation to cosmetics in 1985 would D have been likely to cause confusion or deception when compared with the use by the appellant of the 'French Connection' mark in connection with items of clothing.

Held, further, that, in expungement proceedings under s 33 of the Act, the onus rested upon the applicant for expungement, if he relied, inter alia, on s 17(1) of the Act, to establish on a balance of probabilities that the notional use of the mark in a fair and normal fashion - in this instance, by the appellant in respect of clothing and by the respondent in respect of cosmetics - would, more likely than not, be E deceptive or at least confusing in regard to the source of the respective...