Electoral Commission v International Electrotechnical Commission

• Jurisdiction: South Africa
• Judge: Fleurette Coetsee (Ms)
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2325 (TRM)
• Docket Number: Information not supplied

Coetsee:

ELECTORAL COMMISSION, (hereinafter referred to as "the Applicant") was established in terms of Chapter 9 of the Constitution of South Africa (Act 108 of 1996), and Section 3 of the Electoral Commission Act (Act 51 of 1996).

2015 JDR 2325 p2

Coetsee

The Applicant applied for the registration of the marks IEC AND DEVICE, IEC SOUTH AFRICA AND DEVICE, IEC ELECTORAL COMMISSION ENSURING FREE AND FAIR ELECTIONS SOUTH AFRICA AND DEVICE and IEC in relation to various goods and services on 9 March 2005 (2005/04624 - 36) and 14 June 2005 (2005/11753 - 6) respectively.

In its heads of argument, the Applicant summarised in general the goods and services in respect of all of these applications as follows:

(a)

Trade mark application nos. 2005/04624 IEC device, 2005/04629 IEC SOUTH AFRICA device, 2005/04633 IEC ELECTORAL COMMISSION ENSURING FREE AND FAIR ELECTIONS SOUTH AFRICA device and 2005/ 11753 IEC relate to the following goods in class 9:

"Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus;"

(b)

Trade mark application nos. 2005/04625 IEC device, 2005/04630 IEC SOUTH AFRICA device, 2005/04634 IEC ELECTORAL COMMISSION ENSURING FREE AND FAIR ELECTIONS SOUTH AFRICA device and 2005/ 11754 IEC relate to the following goods in class 16:

"Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material

2015 JDR 2325 p3

Coetsee

(except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers type; printing blocks;"

(c)

Trade mark application no. 2005/04626 IEC device relates to the following goods in class 25:

"Clothing, footwear, headgear;"

(d)

Trade mark application nos. 2005/04627 IEC device, 2005/04631 IEC SOUTH AFRICA device, 2005/04635 IEC ELECTORAL COMMISSION ENSURING FREE AND FAIR ELECTIONS SOUTH AFRICA device and 2005/ 11755 IEC relate to the following goods in class 41:

"Education; providing of training; entertainment; sporting and cultural activities;"

(e)

Trade mark application nos. 2005/04628 IEC device, 2005/04632 IEC SOUTH AFRICA device, 2005/04636 IEC ELECTORAL COMMISSION ENSURING FREE AND FAIR ELECTIONS SOUTH AFRICA device and 2005/11756 IEC relate to the following goods in class 42:

"Electoral services; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services;"

These are hereinafter collectively referred to as "the subject trade mark applications".

INTERNATIONAL ELECTROTECNICAL COMMISSION (hereinafter referred to as "the Opponent"), is an international standards organisation existing under the laws of Switzerland. The Opponent is the applicant for registration of trade mark application nos. 2006/24362 - 7 IEC AND DEVICE in classes 9, 16, 35, 38, 41 and 42.

2015 JDR 2325 p4

Coetsee

These trade mark applications post date the subject trade mark applications.

A. POINTS IN LIMINE

Three points in limine were raised by both parties, which were heard before the main opposition matter was heard.

1. Application for Postponement

On 28 April 2009 the Opponent lodged a notice of motion seeking an order that:-

—

the matter be postponed sine die

—

the parties be granted leave to amend or supplement their respective papers

—

that the costs of the proceedings for 29 April 2009 be reserved

—

further or alternative relief as deemed just.

The Opponent in this notice of motion raised several points in a founding affidavit accompanying the notice of motion, in support of the request that the matter be postponed. These included a submission that (a) "...the applicant's evidence .... is woefully inadequate" in that "... the deponent on behalf of the applicant does not allege that he is duly authorised to depose to the answering affidavit.", and that " .... such overly broad specifications needlessly clutter the register, and are not in the public interest."

The Opponent further indicated that because the trade marks of the Opponent had been refused against the subject trade mark applications, its applications had to be amended to make provision for the Opponent's extensive honest concurrent use as envisaged in section 14 of the Trade Marks Act, Act 194 of 1993 ("the Act").

In this regard, and in view of the above, Counsel for the Opponent argued that proceeding with the hearing at that point in time would not be in line with the principle that the courts were reluctant to hear matters piece-meal.

2015 JDR 2325 p5

Coetsee

On the morning of the hearing, the Applicant lodged a supplementary affidavit to address the point raised by the Opponent of whether the deponent was duly authorised to depose to the answering affidavit or not. In my opinion this affidavit adequately supported the Applicant's argument that the deponent was indeed duly authorised to depose to the answering affidavit.

The Opponent's argument that "....the various applications of the applicant and the opponent should be heard simultaneously to avoid a multiplicity of actions ...." was not convincing. The Opponent had to date not submitted any documentation that would warrant a consideration of its applications in terms of section 14 of the Act. In fact, the Opponent had as yet not even applied to have its applications converted to applications to be considered in terms of section 14. In addition, it had to be kept in mind that applications under section 14 could...