Mars Incorporated v Candy World (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Botha JA, Nestadt JA, Kumleben JA, Goldstone JA and Nicholas AJA
• Judgment Date: 28 November 1990
• Citation: 1991 (1) SA 567 (A)
• Hearing Date: 08 November 1990
• Court: Appellate Division

Nestadt JA:

Appellant ('Mars') is a company incorporated in the United G States of America. It is the proprietor of a trade mark 'Chappie'. The mark is registered in terms of the Trade Marks Act 62 of 1963 under No 1608/36 in class 31 in respect of 'food for animals'. Chapelat Industries (Pty) Ltd ('Chapelat') was formerly the respondent in the appeal but Candy World (Pty) Ltd, to which Chapelat has transferred its H business and assets and assigned its trade marks, was at the hearing substituted as respondent. Chapelat applied in terms of s 36(1)(b) of the Act for an order expunging Mars' mark from the register. This section empowers the Court or Registrar of Trade Marks, on the application of 'any person aggrieved', to order the removal of a registered trade mark which has not been bona fide used for a continuous I period of five years or longer prior to one month before the date of the application. In its application, which was made to the Registrar, Chapelat alleged such non-user. Mars did not dispute that it had not used its mark. The ground on which Mars opposed the application was that Chapelat was not a person aggrieved. The Registrar upheld this defence and accordingly refused the application. Chapelat successfully appealed J to the Transvaal Provincial Division. That Court

Nestadt JA

A held that Chapelat was a person aggrieved. The dismissal of the application was therefore set aside. An order removing 'Chappie' from the Register was substituted. Mars now appeals against that order.

In summary, Chapelat's allegation that it is a person aggrieved under s 36 is based on the fact that the presence of Mars' trade mark on the register is an obstacle to an application which Chapelat made in terms B of s 53(1) of the Act for the defensive registration of a trade mark in class 31. Let me explain this. Chapelat had for many years been the proprietor of certain trade marks consisting of or featuring the name 'Chappies'. They are registered in Part A of the register in respect of goods falling under class 30, viz 'sweets, chewing-gum, chocolates and confectionery'. From about 1948 it has used the mark on a type of C chewing-gum called bubble gum. According to Chapelat's evidence in the s 36 proceedings, 'Chappies' as used in this manner 'is undoubtedly not only a household word but probably one of the best known trade marks in the country'. The further allegation is made that the mark has a 'very substantial reputation'. In support of this, details of annual sales and D amounts spent on advertising over a number of years are given. It is said that Chapelat feared that in these circumstances confusion could arise in the market-place if 'Chappies' or a similar name were to be used by other parties on products other than bubble gum. Chapelat therefore decided to and did file an application (under No 81/1127) in terms of s 53(1) for the defensive registration of 'Chappies' in class E 31. Section 53(1) provides inter alia that where the Registrar is of opinion that, by reason of use or any other circumstances, a trade mark registered in Part A would, if used in relation to goods other than the goods in respect of which it is registered, be likely to be taken as indicating a connection in the course of trade between the first-mentioned goods and the proprietor of the registered mark, the F mark may, on application by the proprietor, be registered defensively in respect of such first-mentioned...