Distillers Corporation (SA) Ltd v Stellenbosch Farmers Winery Ltd

• Judge: Nicholas J, Franklin J and Van Reenen J
• Judgment Date: 27 October 1978
• Citation: 1979 (1) SA 532 (T)
• Hearing Date: 26 September 1978
• Court: Transvaal Provincial Division

Franklin J:

The appellant has sought to register the trade mark No 72/2616 "Aromador Multi-Bouquet" in class 33 (Schedule 4 of the Trade Mark Regulations 1971) in respect of brandy, whisky, gin, vodka, rum,

Franklin J

cane spirit and all other spirits; cocktails, liqueurs; wines; cider; bitters and alcoholic essences.

The application was originally accepted by the Registrar of Trade Marks A with an admission by the appellant that:

"Applicants admit that registration of this trade mark shall not debar others from the bona fide descriptive use in the ordinary course of trade of the words 'multi' and 'bouquet'".

The mark was advertised in the patent journal in this form on 31 January 1973.

B On 24 April 1974 an application by the appellant was made to amend the admission referred to above to the form of a disclaimer which read:

"Registration of this trade mark shall give no right to the exclusive use of the word 'multi' and of the word 'bouquet' separately and apart from the mark".

C On 24 July 1974 the application for registration was opposed by the respondent on the grounds that it was a common and/or obvious combination of two ordinary English words, bouquet and multi, and that it was common to the trade in the goods in respect of which registration was sought, and/or was reasonably required for use in the trade, and/or was of a non-distinctive character in relation to the goods.

D The objection was upheld by the Registrar, who granted registration subject to the disclaimer desired by the respondent, namely:

"Registration of this trade mark shall give no right to the exclusive use of the expression multi-bouquet".

E The appellant was ordered to pay the respondent's costs of the objection. It is against this judgment that the present appeal is brought.

The Registrar's judgment contains two main findings, namely:

(a)

that the onus of justifying a disclaimer was upon the respondent;

(b)

that the expression "multi-bouquet" is a combination of two words, F one of which is common to the trade and the other a common prefix, which is so apt for normal description that it cannot acquire a trade mark monopoly.

As to the question of onus, Mr Marais, who appeared for the appellant, supported the Registrar's finding and Mr MacArthur, for the respondent, G contested it. The Regstrar, in coming to the conclusion that the onus was on the respondent to justify his intervention and to persuade him to grant an amendment of the endorsement, applied the dicta of SARGANT J in Cadbury Bros Ltd's application 32 RPC 450 at 462 in preference to those of Lord WATSON in Eno v Dunn 7 RPC 311 at 315. Neither counsel was able to refer H us to any South African authority dealing with the incidence of the to onus in a case of this nature. However, I do not consider it necessary to decide this question because I have come to a clear conclusion on the merits of the matter which is not dependent upon any view as to the party upon whom the onus lies.

Since the respondent's objection was not to the registration of the appellant's trade mark but to the mark being registered without a disclaimer in regard to the expression "multi-bouquet", s 18 of the Trade Marks Act 62 of 1963 ("the Act") governs the instant case. The relevant part reads:

"18.

If a trade mark -

Franklin J

(b)

contains matter common to the trade or otherwise of a non-distinctive character, the Registrar or the Court, in deciding whether the trade mark shall be entered or remain on the register, may require, as a condition of its being entered or remaining on the register -

(i)

that the proprietor shall disclaim any right to the exclusive A use of any such part of the trade mark, or to the exclusive use of all or any portion of any such matter as aforesaid, to the exclusive use of which the Registrar or the Court holds him not to be entitled; or

(ii)

that the proprietor shall make such other disclaimer or memorandum as the Registrar or the Court may consider necessary for the purpose of defining his rights under the registration".

B The second postulate in s 18 (b), "of a non-distinctive character", is distinct from and independent of the first postulate, "matter common to the trade". Hence, even if the matter is not commonly used in the trade C (or reasonably required for use therein) it may nevertheless be "of a non-distinctive character". See Distillers Corporation (SA) Ltd v SA Breweries Ltd and Another 1976 (3) SA 514 (A) at 552F.

As to the meaning of the phrase "common to the trade", Mr Mac Arthur, whilst conceding that it is capable of two meanings, namely "in common use in the trade" and "open to the trade to use", submitted that the meaning D to be attributed to the phrase depends upon the circumstances, and that in the present case the correct meaning is "open to the trade to use", and consequently once other traders might reasonably wish to use the word "multi-bouquet" it should be disclaimed because it is "common to the trade". He based this submission on the dicta of CHITTY J in Burland v Broxburn Oil Co (1880) 42 Ch D 274 at 280 and upon the following statement E by GALGUT J in delivering the judgment of the Full Bench of the Transvaal Provincial Division in the Distillers Corporation case:

"In my view the evidence shows that 'master' has been in common use in the trade and further that it should be open to the trade to use".

When the case went to the Appellate Division, however, TROLLIP JA said this (at 552B):

"In the judgments of the lower courts and in counsel's heads of argument F in this Court it was assumed that the statutory postulate, 'matter common to the trade'. comprehends something that is reasonably required for use in...