Maryland Products Distributors v Liddell

• Jurisdiction: South Africa
• Judge: Goldstone AJ
• Judgment Date: 10 May 1978
• Court: Transvaal Provincial Division
• Hearing Date: 09 May 1978
• Citation: 1978 (4) SA 455 (T)

Goldstone AJ:

In this matter the applicant seeks an order that the Registrar of Trade Marks in Pretoria be ordered to remove forthwith from the register of trade marks the trade mark "Eezy-Blow Bloons" presently A registered in the name of the respondent in class 28. There is also an application for costs.

The grounds upon which the relief is claimed appear from paras 5 and 6 of the applicant's affidavit:

"5.

The respondent has not used the trade mark in relation to substances for making balloons, or indeed for any other goods or services since filing his application on the 2nd July, 1975.

6.

B Furthermore, it is my contention that the respondent registered the said trade mark without any bona fide intention on his part that it should be used in relation to the goods or services described in his certificate of registration, or indeed any other goods or services."

Although it is not expressly stated, the application is clearly made pursuant to the provisions of s 36 (1) of the Trade Marks Act 62 of 1963.

C Section 36 of that Act provides in ss (1) :is follows:

"Subject to the provisions of s 16 (2) and s 53, a registered trade mark may, on application to the Court, or at the option of the applicant, subject to the provisions of s 69, to the Registrar, by any person aggrieved, be taken off the register in respect of any of the goods or services in respect of which it is registered, on the grounds either:

(a)

D that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him, and that there has in fact been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being, up to the date one month before the date of the application."

When this matter was called, Mr Puckrin, on behalf of the respondent, E argued in limine that there was a fatal non-joinder in that the Registrar of Trade Marks had not been joined as a party to the proceedings. In support of his argument the respondent's counsel relied on the judgment in this Court by TROLLIP J (as he then was) in Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk 1963 (2) SA 10 (T).

In that case the matter before the Court was an application under s 136 of F the Patents, Designs, Trade Marks and Copyright Act 9 of 1916. That section was the predecessor of s 36 (1) (a) and (b) of the present Trade Marks Act 62 of 1963. It also made provision for an application to Court, although not to the Registrar, for a trade mark to be taken off the register on the grounds that such trade mark was not registered with the bona fide intention of using it, or that there had been no bona fide user of such trade mark for a period of five years prior to the application.

G In the Gulf Oil Corporation case the respondent was...