National Brands Limited v Lesaffre Et Compagnie

• Jurisdiction: South Africa
• Judge: Tuwe, AN
• Court: Registrar of Trade Marks
• Citation: 2015 JDR 2406 (TRM)
• Docket Number: 2002/03861

Tuwe AN:

The Applicant for registration is Lesaffre Et Compagnie (hereinafter referred to as "the Applicant"), a French company with its principal place of business at 41 Rue Etienne Marcel Street, Paris, France. The Applicant applied for the registration of trade mark application no. 2002/03861 BAKER'S BONUS and BAKERMAN Device in class 30 in respect of:

"Flower, yeast, baking powder, bread improvers (raw materials and additives for preparing and improving bakery products) dough making bread, salt."

The Opponent is National Brands Limited, a company incorporated in the Republic of South Africa, with its principal place of business at 30 Sloane Street, Bryanston, Johannesburg, South Africa. The Opponent is the registered proprietor of BAKERS and BAKERS and BAKERMAN device trade marks. The Opponent's relevant trade mark registrations are listed in paragraph 10 on pages 8 to 11 of the founding affidavit.

The Applicant lodged a counter application for partial expungement of the Opponent's trade marks. The Opponent is the Respondent in the counter application.

Both these matters were argued before me simultaneously, and I will deal with it as such hereunder.

The Opponent opposed the registration of the Applicant's trade mark on the basis of its existing registered rights in the trade marks BAKERS and BAKERS AND BAKERMAN device. The Opponents alleged the Applicant's mark offended the provisions of Sections 10(3), 10(12), 10(14)and 10(17) of the Trade Marks Act, No.193 of 1994 ("the Act").

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Tuwe AN

Section 10 provides that:

Unregistrable trade marks.- The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of sections 3 and 70, be liable to be removed from the register:

(3)

a mark in relation to which the applicant for registration has no bona fide claim to proprietorship,

(12)

a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bones mores, or be likely to give offence to any class of persons,

(14)

subject to the provision of section 14, a mark which is identical to a registered trade mark belonging to a different proprietor or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of such trade mark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trade mark consents to the registration of such mark,

(17)

a mark which is identical or similar to a trade mark which is already registered and which is well-known in the Republic, if the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered mark, notwithstanding the absence of deception or confusion, unless the proprietor of such trade mark consents to the registration of such mark

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APPLICATION FOR PARTIAL EXPUNGEMENT

The Applicant filed a counter application for the partial expungement of some of the Opponent's trade marks. The Applicant's contention was that the specification of the Opponent's trade mark registrations were extremely wide. In its heads of arguments the Applicant submitted that the Opponent only used, and had for the last years only used, its trade marks in relation to "biscuits, confectionery, crisp breads and related goods"

The Applicant sought the partial expungement of the Opponent's marks on the basis that the Opponent had not used its trade mark in relation to all the goods for which they were registered. In this regard the Applicant relied on the provisions of Section 27(1) (a) of the Trade Marks Act 194 of 1993 ("the Act").

Section 27(1) (a) provides that:

27.

Removal register on ground of non-use.- (1) Subject to the provisions of section 70 (2), a registered trade mark may, on application to the court, or, at the option of the applicant and subject to the provisions of section 59 and in the prescribed manner, to the registrar by any interested person, be removed from the register in respect of any goods or services in respect of which it is registered on the ground either-

(a)

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 or any person permitted to use the trade mark as contemplated

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by section 38, 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 or any person so permitted for the time being up to the date three months before the date of the application.

The Opponent's trade mark registrations that relate to the counter application are listed in paragraph 6 of the Applicant's heads of argument from paragraph 6.1.1 - 6.1.10.

The Applicant submitted that it was an interested person as envisaged in Section 27 of the Act, and therefore it had the necessary locus standi to apply for the partial expungement of the Opponent's trade marks. It was the Applicant's contention that where a trader uses the fact of his registration as part of his case against another trader in any legal proceedings, the second trader was aggrieved.

In support of its contention that it was an interested party, the Applicant referred to a number of cases. In Lubbe NO and others v Millenium Style (Pty) Ltd and others, Lubbe and others NNO v Millenium Style (Pty) Ltd 2007 BIP 133 {SCA), the Supreme Court of Appeal stated thus (at 137 C - D):

"The question whether a party is an 'interested person' entitled to apply for the rectification of the register under section 24 of the 1993 Act as determined at the time of litis contestation and once a party has legal

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standing, the other party cannot by its action destroy the first mentioned party's standing. The other reason is this: a person in the trade area covered by the impugned trade mark is in principle an interested party because such a person has an interest in having the register clear objectionable registrations".

In Commercial Auto Glass (Pty) Ltd v Baker Street Trust and Others 2006 BIP 65 (T) it was held by the (then) Transvaal Division at 69 C:

"Mr Morley, for the respondents, argued that the applicant has not led any evidence that it wishes to expand its business beyond the 'automotive glass and windscreen manufacture and replacement industry'. As such, he submitted that, other than the class 12 registration under 1942/00516/2, the applicant was not an interested person for the relief that it seeks. It is the only trade mark that can hamper its business activities or in respect of which it may have a 'pecuniary or proprietary' interest.

Mr Wheeldon, for the applicant, however, argued that the term 'interested person' should be given a meaning which would also accommodate the bona fide aspirations of a competitor in expanding its business to ARG related fields. I agree with Mr Wheeldon".

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In South African Football Association v Standton Woodrush (Pty) Ltd and Another 2002 BIP 159 (SCA), Spoelstra J said the following at 239:

"The first respondent contends that in order to have locus standi to institute these proceedings the applicant must show that, as the date of the institution of the proceedings, it was a 'person aggrieved' within the meaning of s 33(1) of the Trade Marks Act 62 of 1963 (the old Act) or an 'interested person' within the meaning of s 24(1) of the Trade Marks Act, Act 194 of 1993 (the new Act). The new Act commenced on 1 May 1955 and repealed the old Act. I do not consider the change of wording of "person aggrieved" in s 33(1) of the old Act to 'interested person' in s 24(1) of the Act of any real significance in this matter. It is clear from the cases which considered the term "person aggrieved" that it refers to persons "who are in some way or other substantially interested in having the mark removed from the register" and "a genuine and legitimate competitive interest in the trade to which the offending mark relates".

Reference was made in the above case to Valentino Globe BV v Phillips and Another 1998 BIP 210 (SCA) at 214 E-H (1998 (3) SA 775 at 781 B-D where Harms JA stated that:

"The onus rests upon the applicant for removal to establish, as a reasonable possibility, that he is a person aggrieved. For this purpose it is assumed that the trade mark is wrongly on the register. A wide and liberal interpretation is given to the term 'person aggrieved'. The applicant must have a substantial

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interest in the mark or must substantially be damaged by it remaining in the register. The fact that the registered constitutes an obstacle to the registration of a mark applied for by the applicant is prima facie evidence of an interest, but if that application for registration was in bad faith, vexatious or without any substance, the prima facie inference is negated by abandoning the term "person aggrieved" and embracing the term "interested person" in the new Act, the Legislature has simply embodied in the legislation the test applied by the Court when investigating whether or not a person was aggrieved by the registration of the trade mark. The same consideration seem to apply as did before the new legislation came into force. I shall approach the matter on this basis".

The Applicant submitted in its heads of argument at paragraph 7.7 that in Webster & Page, South African Law Trade Marks at para 13.2, page 13-6, the authors state that the interpretation given to the words "interested person" where they occur in Section 73(6)(a) of the Companies Act, Act 61 of 1973 would mutatis mutandis be equally applicable in the Act. The following was...