Mars Inc v Cadbury (Swaziland) (Pty) Ltd and Another

JurisdictionSouth Africa
JudgeHarms JA, Marais JA, Plewman JA, Melunsky AJA and Mpati AJA
Judgment Date08 September 2000
Citation2000 (4) SA 1010 (SCA)
Docket Number427/98
Hearing Date25 August 2000
CounselP Ginsburg SC (with him R Michau) for the appellant, the heads of argument having been drawn by P Ginsburg SC (with him M M Jansen). C E Puckrin SC (with him J N Cullabine) for the first respondent. No appearance for the second respondent.
CourtSupreme Court of Appeal

Harms JA:

[1] The first respondent ('Cadbury') is the registered proprietor of two trade marks, the one for the name mark E 'Chappies' and the other for a device mark consisting of a dancing chipmunk, attired with a hat and bow tie, in conjunction with the words 'Chappie Chipmunk' and 'Chappie Tjokker'. 'Tjokker' is the Afrikaans word for a chappie or nipper and not for a chipmunk, but that is by the way. F 'Chappies' chewing bubble gum are, in the Southern African context, well-known to the masticating generation who chewed through 8 826 tonnes of the substance in 1995. It is therefore no surprise to learn that these trade marks are registered in part A of the register and fall in class 30, a class which relates among other things to confectionery. Cadbury (I use the name generically to include G references to its predecessors in title), in the light of the success of its trade marks, sought wider protection and obtained defensive registrations for the same marks in a number of classes, including class 31, which also encompasses foodstuffs for animals. H

[2] Trade marks are registered in different classes and a trade mark must, subject to what follows, be used in relation to the goods or services of the class in which it is registered. Trade mark protection under the repealed Trade Marks Act 62 of 1963 extended only to the use of the trade mark by another on goods or services falling within the same class. In order to extend protection to relatively well-known I trade marks in relation to goods or services falling in other classes, such marks could be registered defensively in other classes. The owner of a defensive trade mark was not obliged to use it in relation to goods or services in that class and the mark could not and at this stage cannot be revoked because of non-use. In effect such a mark provided a statutory passing-off remedy in relation to J

Harms JA

goods or services which fall outside the class of goods or services of the A principal mark. Defensive trade marks could be registered if, in the terms of s 53(1),

'the Registrar [of Trade Marks] is of the opinion that, by reason of the extent of use or of any other circumstances, a trade mark registered in part A of the register would, if used in relation to goods or services other than the goods or services in respect of which B it is registered, be likely to be taken as indicating a connection in the course of trade between the first-mentioned goods or services and the proprietor of the registered trade mark . . .'.

[3] Under the current Trade Marks Act 194 of 1993 defensive trade marks can no longer be registered. All trade marks have to be used and, C if not used, may be removed from the register (s 27). The reason for the change lies in the change to the infringement provisions. The owner of a trade mark can now sue for infringement even if the trade mark is used in a class different from the one in which the trade mark is registered, provided that due to the similarity of the goods or services in the different classes there exists a likelihood of D deception or confusion (s 34(1)(b)). In order to regulate the transition, defensive trade marks have been elevated to 'ordinary' trade marks and they can now be removed from the register on the same grounds, subject to the proviso that they may not be removed on the ground of non-use for a period of ten years (s 70(2)). [1]

[4] The appellant ('Mars') applied by way of notice of motion to the Transvaal Provincial Division for an order directing the Registrar E to remove Cadbury's defensive registrations from the register. They are impediments to applications filed by Mars for trade mark protection in class 31 for animal foods for (i) the name mark 'Chappie' and (ii) a device mark consisting of the head of a dog accompanied by the name F 'Chappie'. The evidence shows that Mars has in some foreign jurisdictions a substantial reputation as a provider of dog food under the name 'Chappie'. In this country it had trade mark protection for the name 'Chappie' for animal food since 1936 but it lost its protection through non-use (Mars Incorporated v Candy...

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9 practice notes
  • LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another
    • South Africa
    • Invalid date
    ...Fund 2002 (1) SA 511 (SCA) ([2002] 1 All SA 413; [2001] ZASCA 120): referred to Mars Inc v Cadbury (Swaziland) (Pty) Ltd and Another 2000 (4) SA 1010 (SCA) ([2000] ZASCA 36): dictum in para [10] Minister of Land Affairs and Agriculture and Others v D & F Wevell Trust and Others 2008 (2) SA ......
  • LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another
    • South Africa
    • Invalid date
    ...Fund 2002 (1) SA 511 (SCA) ([2002] 1 All SA 413; [2001] ZASCA 120): referred to Mars Inc v Cadbury (Swaziland) (Pty) Ltd and Another 2000 (4) SA 1010 (SCA) ([2000] ZASCA 36): dictum in para [10] Minister of Land Affairs and Agriculture and Others v D & F Wevell Trust and Others 2008 (2) SA ......
  • Die Bergkelder Bpk v Vredendal Koöp Wynmakery and Others
    • South Africa
    • Invalid date
    ...Group plc and Another v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA): referred to A Mars Inc v Cadbury (Swaziland) (Pty) Ltd and Another 2000 (4) SA 1010 (SCA): dictum in para [10] Foreign cases Bograin SA's Trade Mark Application [2005] RPC 14: applied B British Sugar plc v James Robertson & So......
  • A M Moolla Group Ltd and Others v the GAP Inc and Others
    • South Africa
    • Invalid date
    ...Inc v Magic Style Sales CC 1997 (3) SA 13 (A) ([1997] 1 All SA 327): referred to B Mars Inc v Cadbury (Swaziland) Pty Ltd and Another 2000 (4) SA 1010 (SCA): dictum in paras [11] - [14] McDonald's Corporation v Joburgers Drive-In Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A) ([1996] 4 ......
  • Request a trial to view additional results
9 cases
  • LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another
    • South Africa
    • Invalid date
    ...Fund 2002 (1) SA 511 (SCA) ([2002] 1 All SA 413; [2001] ZASCA 120): referred to Mars Inc v Cadbury (Swaziland) (Pty) Ltd and Another 2000 (4) SA 1010 (SCA) ([2000] ZASCA 36): dictum in para [10] Minister of Land Affairs and Agriculture and Others v D & F Wevell Trust and Others 2008 (2) SA ......
  • LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another
    • South Africa
    • Invalid date
    ...Fund 2002 (1) SA 511 (SCA) ([2002] 1 All SA 413; [2001] ZASCA 120): referred to Mars Inc v Cadbury (Swaziland) (Pty) Ltd and Another 2000 (4) SA 1010 (SCA) ([2000] ZASCA 36): dictum in para [10] Minister of Land Affairs and Agriculture and Others v D & F Wevell Trust and Others 2008 (2) SA ......
  • Die Bergkelder Bpk v Vredendal Koöp Wynmakery and Others
    • South Africa
    • Invalid date
    ...Group plc and Another v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA): referred to A Mars Inc v Cadbury (Swaziland) (Pty) Ltd and Another 2000 (4) SA 1010 (SCA): dictum in para [10] Foreign cases Bograin SA's Trade Mark Application [2005] RPC 14: applied B British Sugar plc v James Robertson & So......
  • A M Moolla Group Ltd and Others v the GAP Inc and Others
    • South Africa
    • Invalid date
    ...Inc v Magic Style Sales CC 1997 (3) SA 13 (A) ([1997] 1 All SA 327): referred to B Mars Inc v Cadbury (Swaziland) Pty Ltd and Another 2000 (4) SA 1010 (SCA): dictum in paras [11] - [14] McDonald's Corporation v Joburgers Drive-In Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A) ([1996] 4 ......
  • Request a trial to view additional results

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