Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk

• Jurisdiction: South Africa
• Judge: Trollip J
• Judgment Date: 13 December 1962
• Court: Transvaal Provincial Division
• Citation: 1963 (2) SA 10 (T)

E Trollip, J.:

This is an application under sec. 136 of the Trade Marks Act, 9 of 1916, for rectification of the register of Trade Marks.

On the 3rd January, 1955, the first respondent, a South African company, caused the trade mark 'Senator' to be registered in respect of all goods included in Clause 47 of the 3rd Schedule of the Trade Marks Rules promulgated under sec. 192 (2) of the Act, namely,

F 'Candles, common soap, detergents; illuminating, heating or lubricating oils; matches, and starch, blue, and other preparations for laundry purposes.'

The applicant, a corporation of the United States of America, is a producer of and dealer in lubricating oils and has dealt in such oils in South Africa for more than 30 years. It is the registered owner of the G trade mark 'Senate', covering lubricating oils in the U.S.A. and in other countries of the world, and has used this trade mark in those countries for a considerable number of years. In order to protect its use of the trade mark 'Senate' in the Republic of South Africa it sought registration thereof in respect of 'lubricating oils' with the Registrar H of Trade Marks, but this application was and is frustrated by the presence of the first respondent's trade mark 'Senator' on the register for 'illuminating, heating and lubricating oils' or alternatively 'lubricating oils'.

The applicant alleges that there has been no bona fide user by the first respondent of its trade mark in respect of those goods for five years prior to this application, and that it is therefore entitled to have the register rectified under sec. 136 by the deletion of those goods from the specification in respect of which the trade mark 'Senator' is registered. The first respondent opposes the application.

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Originally, the application proceeded by way of action for the same relief but, at the instance of the first respondent, this Court held that the only permissible procedure was by way of application and dismissed the summons as being irregular (see 1962 (3) SA 158 (T)).

A In the present proceedings Mr. van der Spuy, for the first respondent, contended in limine, that as his client is admittedly domiciled and resident and carries on business in the Cape Province where its registered office is, this Court has no jurisdiction to entertain the application.

Sec. 136, in so far as it is relevant to the preliminary point reads:

B 'A registered trade mark may, on application to the court of any person aggrieved, be taken off the register in respect of any of the goods for which it is registered'

on the ground of non-user. 'The court' is defined in sec. 193 as meaning

'in respect of any matter, the provincial or local division which by law has jurisdiction in respect of that matter'.

C The question, therefore, is whether or not this Court has jurisdiction by law in respect of this application under sec. 136 for rectification of the register.

By sec. 19 (1) of the Supreme Court Act, 59 of 1959, this Court has jurisdiction

'in and over all persons residing or being in and all causes arising . . D . within its area of jurisdiction and in all other matters of which it may according to law take cognizance'.

That repeats in essence the requisites for the jurisdiction of the various Provincial and Local Divisions enacted by their previous statutes (all collected by Pollak on Jurisdiction, pp. 7 - 8) which were all repealed by the Supreme Court Act.

E The decisions on the meaning and effect of the similar wording of those previous statutes are therefore applicable too in respect of sec. 19 (1). According to them the decisive factor is whether the 'cause' F means an action or legal proceeding (not a cause of action), and 'arising' means duly arising or originating, i.e. according to the law; a 'cause arising within its area of jurisdiction' therefore means an action or legal proceeding which, according to the law, has duly originated within the Court's area of jurisdiction. The result is that the Court's jurisdiction under sec. 19 (1) is simply determined, as hitherto, by reference to the common law and/or any relevant statute. In G such determination the presence or residence of the defendant or respondent within or without the Court's area of jurisdiction will have that importance or relevance which the common or statute law attaches to it (Pollak pp. 9 - 14 where all the authorities are collected). See too sec. 19 (3) by virtue of which the jurisdiction which any Division had H by common law and/or statute law at the commencement of the Supreme Court Act is retained.

I therefore turn now to enquire whether this Court has jurisdiction in the present matter according to the common law and/or the Trade Marks Act.

In Steytler, N.O v Fitzgerald, 1911 AD 295 at p. 315, INNES, J., (later C.J.) said that in order to ascertain whether the Court was by common law the proper forum for the particular suit one had to have

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regard to the nature of the action. 'Was it personal, real or mixed?'Pollak submits that, although that accords with the Roman and Roman-Dutch Law, it does not afford a proper basis for deciding questions of jurisdiction in modern South African Law. He maintains A that, because the principle that jurisdiction depends upon the power of the Court to give an effective judgment is now generally adopted, it is not the nature of the action but the relief claimed that must be regarded, and he quotes the authorities, including Palm v Simpson, (1848) 3 Menz. 565, to support his opinion (pp. 14 - 21). That latter B approach was in effect adopted by GANE, J., in Mobbs Ltd v Sargent, 1936 E.D.L. 356. There the plaintiff claimed, firstly, an order against the defendant declaring that two trade marks registered in the latter's name, were invalid, and, secondly, an order compelling the defendant to apply to the Registrar for cancellation of the two trade marks. The defendant contended that the E.D.L. had no jurisdiction C because the Registrar and registry of Trade Marks were located at Pretoria, but GANE, J., held that as no relief was claimed against the Registrar, the E.D.L. had jurisdiction; in other words, that the nature of the relief claimed was decisive. The same approach seems to have been adopted too by the AD in Sonia (Pty.) Ltd v Wheeler, 1958 (1) SA 555 (AD), in which Palm v Simpson was approved (see pp. 561E - 562A).

D It is unnecessary, however, for me to decide which of the two approaches should be adopted. Possibly both are valid tests, but whether the one or the other should be applied in any particular case should depend upon the circumstances of that case. In the present proceedings, E if either approach is adopted, I think that this Court has jurisdiction for the reasons that follow.

In accordance with sec. 4 of the Trade Marks Act, the trade marks office for the Republic is located at Pretoria, where it is under the control of the Registrar, who is also at Pretoria (sec. 5). At this office the F administration of the Act is conducted for the whole of the Republic (secs. 97, 98) and the register of trade marks is kept (secs. 96 - definition of 'register', and 132). This register is compiled, controlled and maintained by the Registrar. He is responsible for entering registrable trade marks on the register in accordance with the provisions of the Act and Rules (secs. 103 - 120), for renewing the registration (sec. 128), for removing the trade mark from the register G if the registration expires (sec. 129), for registering assignments (secs. 130, 132 (2)), for amending and adding to the register in certain specified respects (secs. 133, 134), and for giving effect to certain specified rectifications ordered by the Court (sec. 135). In regard to many of those duties, he has to exercise a judicial as well as an H administrative function. The Registrar is therefore the guardian of the register and it is his duty in the public's interest to ensure that it is properly compiled and maintained, so much so that he is entitled to appear before any Provincial Court to uphold his refusal to register a trade mark, and to appeal to the AD if a Provincial Court overrules his decision (Holman Bros. Ltd v Registrar of Designs, 1935 T.P.D. 266; Registrar of Trade Marks v Wassenaar, 1957 (4) SA 513 (AD)). The registration of a trade mark has certain important legal consequences. For example, the registration endures for 14 years but may be renewed

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(sec. 121); the proprietor may assign the trade mark (sec. 122) or permit its user by another (sec. 131 bis); the registration affords evidence of the right to the exclusive use of the trade mark and the validity of the registration, which for the first seven years is prima A facie and thereafter conclusive evidence (sec. 123); the registration confers the right upon the proprietor to prevent or recover damages for infringement (sec. 124).

The above emphasises the importance of the register, the registration of the trade mark, and the functions of the Registrar.

Now neither the Act, including sec. 136, nor the Rules prescribe the B form of the application under sec. 136. Sec. 163 provides that notice shall be given to the Registrar by every applicant of an application to Court. Rule 104 provides for service of the application on the Registrar and of a copy of the order; and says that

'the register may, if necessary, thereupon be rectified or altered by the Registrar'.

C Obviously it was not envisaged by the Act or Rules that the Court should itself, or that the proprietor should himself, alter the register when the Court orders rectification under sec. 136. I think that only the Registrar can do that. Consequently, having regard to the aforementioned functions of the Registrar, I think that the only D effective relief that can and must be claimed in an application under sec. 136 is an order directing (or...