Prior Use as a Ground of Opposition in South African Trade Mark Law

• Jurisdiction: South Africa
• Citation: (2008) 19 Stell LR 51
• Date: 27 May 2019
• Published date: 27 May 2019
• Pages: 51-70

PRIOR USE AS A GROUND OF OPPOSITION IN

SOUTH AFRICAN TRADE MARK LAW

Wim Alberts

B Iur LLB LLM LLD

Attorney, Bowman Gilf‌illan; Research Fellow, University of South Africa*

1  Introduction

The c oncept “use” bears various technical me anings in the Trade Marks

Act.1 This is illustrated by the recent Bergkelder trilogy of cases,2 which dealt

with t rade mark in fringement as governed p rimarily by section 34(1) of t he

Act. In t erms of these case s, use of a tr ade mark in gener al only amounts to

infri ngement if the mark is used “as a trade mark ”; that is, to indicate origin.3

Another example of a different meaning the concept “use” can bea r is found

in section 36, the prior u se defence, where use must be “substantial”,4 as well

as “continuous”.5 O ther examples are section 14, which deals with “honest

concurrent use”, and sect ion 27(1)(b), which provides for the expungement of

a registration if the re has been no bona de use of the mark.

This article deals with the meaning of the concept “u se” in opposition

proceedings. Three approa ches ca n be identied . The rst postulates that a

measure of use must h ave t aken place.6 Secondly, it can be stipulated t hat

use must have been m ade to such an extent th at a goodwill has been est ab-

lished. This implies actual tradi ng, and is the position in te rms of the United

Kingdom’s common law,7 and certain provisions of the 1994 Trade Ma rks

Act.8 T his was previously the position in the South African common law.9

A third approach regards the ex istence of a reputation as sufcient. Such an

approach is in line with the current position in the South African common law,

as is illu strated by the decision in Caterham Car Sa les & Coachworks Ltd v

* This ar ticle is based on the author’s unpublis hed LLD-thesis The Relevance of Prior Use in Trad e Mark

Conflict s University of Sout h Africa (2005).

1 194 of 1993.

2 Die Bergkeld er Bpk v Vredenda l Koöp Wynmaker y 2006 4 SA 275 (SCA), Verimark (Pt y) Ltd v

Bayerisch e Motoren Werke Aktiengesell schaft [2007] SCA 53 (RSA) and Co mmercial Auto Glass (Pty)

Ltd v Bayerisc he Motoren Werke Akt iengesellschaf t [2007] SCA 96 (RSA).

3 Para 3. See fu rther Alber ts “Origin of th e Species II: The Veri mark Case an d Trade Mark Infr ingement”

(to be published in t he SALJ).

4 Williams’s Ltd v Massey Lt d [1911] RPC 512.

5 Smith Bartle tt & Co v The British Pu re Oil Grease and Ca rbide Co Ltd White Co Ltd [1934] RPC 157.

6 See the discu ssion in para 2 2 2 below.

7 See the so-calle d Crazy Horse cas e– Alain Bernardin Et Compa gnie v Pavilion Prop erties Ltd [1967]

RPC 581.

8 See s 5(4)(a) discussed in p ara 3 2 2 below. In the lat ter instanc e use as such does n ot suffice, a goo dwill

is require d. See Kerly Law of Trade Ma rks (2005) 272.

9 Tie Ra ck plc v Tie Rack Stores (Pty) Lt d 1989 4 SA 427 (T). Compare furthe r Page “The Ter ritorial

Limitation s of Repute in Passi ng Of f, an d the Appl icability of Unlawful Competit ion t o Sit uations

Created by Int ernational Trad ing” in Neethl ing (ed) Unlawful Com petition (1990) 41.

51

(2008) 19 Stell LR 51

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52 STELL LR 2008 1

Birkin Cars (Pt y) Ltd.10 In casu, the Supreme Cour t of Appeal (SCA) stated11

that the only component of the goodwill of a company that can be damaged by

means of a passing-off is its reputation.12 Accordi ngly, the  rst requirement

for a successf ul passing-off action is proof of the relevant reputation. Such a

view acc ords with t he protection provided to marks that are well-known in

terms of the Pari s Convention, as well as by the South Af rican13 and British14

Trade Mark Acts.

The basic set of rules regarding the meaning of “use” is contai ned in the

current Trade Marks Act. Reference will also be ma de, however, to the provi-

sions of the previous Trade Marks Act.15

2  Opposition by applicants for registration

2 1 The previous Act

2 1 1 Enabling provision

The previous Act did not specica lly provide for an applicant to oppose an

application merely on the basis of his application. Instead, section 17(3) cre-

ated a procedure in te rms of which a determination of the rights of applicants

took plac e, and i n this context the use of a mark pr ior to the ling date of

the competi ng applicant, or prior to the dat e of rst use of the latter, may be

decisive.

2 1 2 Priority in general

In the leading case of Moorgate Tobacco Company Ltd v Philip Morris

Incorporated,16 which dealt with section 17(3), three genera l principles were

enumerated. First ly, it was said that:17

10 1998 3 SA 938 (SCA).

11 Para 16.

12 A contrary v iew has been expressed by Neet hling “The Passi ng-Off Action: Requi rements and Protec ted

Interest s – A Conceptua l and Critical Analysis” 2007 SALJ 459 467, where the author opines that the main

reason for the recogn ition of passing off as a delict is the protection of the distinc tive value of a distinctive

mark.

13 Ss 10(6) a nd 35(3). See the decisio n in A M Moolla Group Ltd v T he Gap Inc 2005 6 SA 568 (SCA) ,

regarding the quest ion as to when a mar k must be well-known. T hese provisio ns grant protection eve n

though a person does not carry on business nor has any goodwill in South Afric a. There is accordingly

considerable harmony in this regard be tween the statutor y law and common l aw. This app ears fu rther

when regard is had to t he decision in McDonald’s Co rporation v Joburgers Dri ve-Inn Restau rant (Pty)

Ltd 1997 1 SA 1 (A) 21C-D, where the Court st ated (emphasis added ) the following:

“The Legisl ature inten ded to extend th e protection of a p assing-off act ion to foreign busi nessmen who

did not have a business or enjoy a goodwill inside thi s country, provided their mar ks were well known in

the Republic. It seems logic al to accept that the degree of knowle dge of the marks that is requir ed would

be similar to th at protected in th e existing law of passi ng-off.”

There are, of course, dif ferences to bear in mi nd. However, the Court’s view largely pla ces the protection

provided on the same footing as that available by way of p assing off. A reputation that is s ufficient for

passing of f is thus s eemingly suf ficient for t he stated p rovisions as wel l, and to this extent the tests a re

similar.

14 See s 56 of the 1994 Trade Mar ks Act.

15 62 of 1963.

16 Determi nation of rights procee dings, unrep orted judgment gi ven by the Hearing Offic er, the Honourable

WG Trollip, on 21 May 1986.

17 17 (emphasis added).

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