Oude Meester Groep Bpk and Another v SA Breweries Ltd; SA Breweries Ltd and Another v Distillers Corporation (SA) Ltd and Another

• Jurisdiction: South Africa
• Judge: Colman J
• Judgment Date: 04 July 1973
• Court: Transvaal Provincial Division

Colman, J.:

A This judgment is in respect of two applications which, by agreement, were argued together. The first of those is an application for an interdict restraining the infringement of certain trade marks, and I shall refer to it as 'the infringement application'. In the other application the main relief sought is the expungement from the register of certain trade marks, and I shall refer to that application as 'the B expungement application'.

In the infringement application the second applicant is Distillers Corporation (S.A.) Ltd. (which I shall refer to as 'Distillers'). It is a producer of and dealer in wine and spirits, and the registered proprietor of a number of South African trade marks. In particular, it is the registered proprietor of 13 marks, listed in its application, all C of which are registered in respect of beer, ale and porter, and some of which are registered also in respect of other fermented liquors and spirits. One of those trade marks consists, simply, of the words 'Ou Meesters'. One of them consists of the words 'Oude Meester' in simplified Gothic lettering, and three others are representations of D devices which include, prominently, the same words in the same lettering. One of those is registered as a defensive mark. Another mark consists of a pictorial device which bears, as a prominent feature, the words 'Oude Meester' printed in conventional Roman capital letters; and there is yet another mark which, without any device or any particular E type of lettering, comprises the words 'Oude Meester Junior'. There are four marks, each of which includes, as a prominent feature, the words 'Old Master'. The remaining two marks relied upon by the applicants in the infringement application are simple word marks. In one of them the word is 'Maestro', and in the other the word is 'Keldermeester'.

F The first applicant in the infringement application is a company whose sole interest in the matter would seem to be that it is the holding company of Distillers. Whether it was necessary or proper for that company to join in the application I need not decide, because counsel for the respondent informed me that he did not wish to raise any issue in that regard. It will, however, be convenient, in this judgment, to G discuss the infringement application (as counsel did in argument) as if Distillers were the sole applicant therein.

The respondent in the infringement proceedings is The South African Breweries Ltd., and I shall refer to it as 'The Brewery'. Since about August, 1972, The Brewery has been marketing, on a large scale, beer H which it calls 'Master Brew', and in respect of which it uses the words 'Master Brew' as a trade mark. That mark, Distillers contends, so nearly resembles one or more of its own marks that its use by The Brewery is likely to deceive or cause confusion. Consequently, Distillers says, the use of the words 'Master Brew' in respect of beer is an infringement of one or more of its trade marks, and should be interdicted. The Brewery denies the likelihood of deception or confusion and resists the claim for relief.

Colman J

In the expungement application (which was instituted about 6½ weeks after the infringement application) The Brewery is the first applicant, and the second applicant, its subsidiary, is also engaged in the business of brewing and marketing beer. When I have occasion to refer to A those two applicants together, I shall call them 'The Breweries'. The first respondent is Distillers, which has appeared to oppose the grant of relief, and the second respondent is the Registrar of Trade Marks, who has taken no part in the proceedings.

B In the expungement application The Breweries seek the expungement from the Register of Trade Marks, in respect of beer, ale and porter, of 12 of the 13 trade marks upon which the infringement application is based, namely, all the marks referred to by me in summarising Distillers' case for an interdict except the mark consisting of the word 'Keldermeester'. Similar relief is sought in respect of two other marks registered in the name of Distillers. One of those consists of a C pictorial device accompanied by the words 'Oude Meester'; the other consists of the word 'Ritmeester'. In the alternative, The Breweries pray for orders directing that the Register of Trade Marks be rectified by the entry, against each of the marks which includes the word 'Master', of a disclaimer of the right to the exclusive use of that D word. Similarly, in relation to each of the marks which includes the word 'Meester', the alternative claim is for an order directing the entry of a disclaimer of the right to the exclusive use of that word. The grant of all or any of that relief has been opposed by Distillers.

Although little may turn on it, I should, perhaps, mention at this stage E an aspect of the consolidated hearing on which I would have sought explicit clarification from counsel during argument, had it occurred to me to do so. As far as I can recall it was not explicitly stated by counsel on either side that, by reason of the agreement to hear the two applications together, treating one as a counter-application to the F other, the affidavit evidence in each application should, in so far as it might be relevant to the other application, be treated as if it were evidence therein. But that, I assumed during the hearing (and still assume), to have been the express or tacit agreement between counsel. It is difficult to specify, at this stage, all the indiciae which gave rise to and supported my assumption; but I do recall that counsel for The G Breweries, when arguing the expungement application, placed reliance (without objection from his opponent) on a passage in an affidavit which had been filed in the infringement application; and the Court (on more than one occasion, I think) put to counsel, in relation to the expungement application, a question which involved a reference to the papers in the infringement matter.

H Although the infringement application was the earlier one, it seems to me to be appropriate that I should first consider the expungement application. It will be logical, I think, to decide which of Distillers' trade marks are to remain on the register, and in what form, before turning to the question whether those marks, or any of them, have been infringed, and if so, what relief should flow from the infringement.

In respect of all Distillers' trade marks except the defensive mark which I have mentioned (mark 65/4055), expungement is claimed,

Colman J

under sec. 36 (1) (b) of the Trade Marks Act, 62 of 1963. The material portions of that provision read as follows:

'... a registered trade mark may, on application to the Court... 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 ground...

(b)

that up to the date one month before the date of the application a continuous period of five years or longer elapsed during which the trade mark was a registered trade mark and during A which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being'.

(I have omitted a proviso which will be quoted and discussed later in the judgment).

B It is not disputed that The Breweries are 'persons aggrieved' within the meaning of the provision, and it is common cause that, as the expungement application was instituted on 22nd September, 1972, the five-year period referred to in sub-sec. (b) of sec. 36 ran, in the present case, from 22nd August, 1967, to 21st August, 1972, inclusive. Expungement is sought, in respect of each mark, only of its registration C for use in relation to beer, ale and porter; and it is common cause that none of the marks was, during the relevant period, used in relation to any of those commodities.

The Breweries thus make out a prima facie case for expungement. But that does not conclude the matter because there are various grounds upon D which expungement may be refused despite the establishment of such a prima facie case. Because of the word 'may' (as opposed to 'shall') in the introductory words of sec. 36 (1), there is probably a general discretion vested in the Court to refuse the relief claimed. (See Lyons & Co. Ltd.'s Application, 1959 R.P.C. 120; cf. Royal Dairy Ltd. v. E Registrar of Trade Marks and Another, 1966 (3) SA 339) (T)). There is, moreover, a specific discretion to refuse relief embodied in a proviso to sec. 36 (1), and a further ground for refusing relief enacted in sec. 36 (2).

I would say at once, however, that sub-sec. (2) has no application to F the present enquiry, and that I am aware of no grounds (other than the grounds which I shall have to consider in relation to the narrower discretion conferred by the proviso to sub-sec. (1)) which would justify me in exercising, against The Breweries, the general discretion which I am willing to assume that I have.

The material portion of the proviso to sec. 36 (1) reads as follows:

'Provided that... the Court may refuse an application made under G para.... (b)... in relation to any goods... if it is shown that there has been... during the relevant period... bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods or services in respect of which the trade mark is registered.'

That must be read with the provisions of the Act which relate to associated trade marks. Sec. 38 provides for the registration of a trade H mark as associated with one or more other trade marks registered in the name of the same proprietor. And sub-sec. (5) of that section provides that:

'any association of a trade mark with any other trade mark registered in the name of the same proprietor shall be deemed to be an asseciation with all the marks associated with that other trade mark, unless the...