Rembrandt Fabrikante en Handelaars (Edms) Bpk v Gulf Oil Corporation
Jurisdiction | South Africa |
Judge | Steyn CJ, Van Blerk JA, Botha JA, Holmes JA and Hoexter AJA |
Judgment Date | 09 May 1963 |
Citation | 1963 (3) SA 341 (A) |
Hearing Date | 01 May 1963 |
Court | Appellate Division |
Rembrandt Fabrikante en Handelaars (Edms) Bpk v Gulf Oil Corporation
1963 (3) SA 341 (A)
1963 (3) SA p341
Citation |
1963 (3) SA 341 (A) |
Court |
Appellate Division |
Judge |
Steyn CJ, Van Blerk JA, Botha JA, Holmes JA and Hoexter AJA |
Heard |
May 1, 1963 |
Judgment |
May 9, 1963 |
Flynote : Sleutelwoorde F
Trade and trade mark — Trade mark — Rectification of register — Application under sec. 136 of Act 9 of 1916 — Jurisdiction of G T.P.D. as forum rei sitae — Bona fide user — Meaning of in section — User purely in order to defeat the application — Such not bona fide.
Headnote : Kopnota
In 1959 the respondent had sought to have its trade mark 'Senate' registered in the Republic in respect of lubricating oils but was unable to do so because of the presence on the register of the appellant's H trade mark 'Senator'. Respondent had therefore, in terms of section 136 of Act 9 of 1916, applied in the Transvaal Provincial Division for a rectification of the register by the deletion at any rate of 'lubricating oils' from the specification of goods in respect of appellant's trade mark, inter alia on the ground that there had been no bona fide user of the trade mark for the requisite period. In this regard the Court found that in all probability the appellant had no serious intention of carrying on any trade, as a commercial enterprise, in lubricating oil under its mark, and that such use as the appellant had made of it had had no other purpose than to defeat the proceedings brought by the respondent. The appellant had contended in limine that the Court had no jurisdiction
1963 (3) SA p342
to entertain the application, but the Court had rejected this contention and granted an order directing and authorising the Registrar of Trade Marks, who had during the proceedings been joined as a respondent, to rectify the register by the deletion of the words 'illuminating, heating and lubricating oils' from the specification. In an appeal,
A Held, that the right to a registered trade mark - which was a right in rem - was situated where the register was kept and that the Transvaal Provincial Division had jurisdiction as the forum rei sitae.
Held, further, that user for an ulterior purpose, unassociated with a genuine intention of pursuing the object for which the Act allowed the registration of a trade mark and protected its use, could not pass as bona fide user within the meaning of the section.
The decision in the Transvaal Provincial Division in Gulf Oil B Corporation v Rembrandt Fabrikante en Handelaars (Edms.) Bpk., 1963 (2) SA 10, confirmed.
Case Information
Appeal from a decision in the Transvaal Provincial Division (TROLLIP, J.). The facts appear from the judgment of STEYN, C.J.
A.S. van der Spuy, for the appellant: As to the first ground on which the Transvaal Provincial Division assumed jurisdiction, viz. 'effectiveness of the Court's order', the ratio decidendi of the Court a quo is entirely wrong because (a) it incorrectly assumes that the relief claimed was an 'order for rectification' directly affecting the Registrar as a party; (b) because it fails to appreciate that the D judgment of any other competent Provincial Division is fully as binding upon the Registrar as that of the Court in Pretoria; (c) it is further defective in that it wrongly assumes that what is no more than a token 'joinder' of the Registrar vests it with a jurisdiction which it might, but for such 'joinder', not have had. As regards (a), the relief claimed E does not directly affect the Registrar as a quasi-judicial official nor is it a matter of giving him a mandamus to rectify the register which he refuses to do in the exercise of a discretion. Proceedings under sec. 136 of Act 9 of 1916 differ toto caelo from proceedings against the Registrar's decision when acting in a quasi-judicial capacity; cf. secs. 112 (1), 133 (3), 135. Proceedings under sec. 136 also differ from F reviews at common law of the Registrar's decision, he being there also the direct party before the Court, i.e. forum domicilii. The action in the present case under sec. 136 is truly one in personam by the aggrieved trader against the non-using proprietor. It only incidentally affects the register and is not an application for 'rectification' of G the register on grounds of mistake or matter ejusdem generis as was wrongly decided a quo. It is also noteworthy that all the relevant facts surrounding the question of 'user' are directly connected with the activities of the appellant which it conducts from its registered head office and principal place of business at Paarl and the Cape Provincial H Division would surely have jurisdiction (and sole jurisdiction if this is a personal action) on the principles enunciated in T.W. Beckett & Co v H. Kroomer, Ltd., 1912 AD at p. 334. As to (b) and (c) supra, the Registrar is a Republican official serving the entire Republic; see sec. 5. He must obey the orders of any competent Court; see Trade Mark Rule 104 read with sec. 193 s.v. definition of 'Court'. It is irrelevant that in regard to many of the Registrar's duties he exercises a judicial as well as an administrative function or that he may appear before any Provincial Division to uphold his refusal to register C
1963 (3) SA p343
a trade mark or to appeal. It is clearly not so that Rule 104 requires, as found by the Court a quo, 'an order directing (or perhaps authorising) the Registrar to rectify the register' as the only effective order. Rule 104 enjoins the Registrar to give effect to any A competent order and an order declaring that there has, in fact, been no bona fide user of the defunct mark is equally and fully effective. Alternatively, even if the Court has to give an order, as stated by the Judge a quo, then any 'Provincial Division which by law has jurisdiction' can issue such an order and the Registrar is, as a Republican official, bound to give effect to it; see sec. 193 (s.v. B 'Court'), sec. 5 (s.v. 'officer for the Union'). When acting under sec. 136, the Registrar is merely a public scribe whose sole duty it is to record the result of the application. It is not suggested that he is only a scribe in all other cases but he was nothing more and could never have been anything more in the instant case; see Tefu v Minister of Justice and Another, 1953 (2) SA at pp. 73, 75 - 6; Mobbs Ltd. v. C Sargent Ltd., 1936 E.D.L. at p. 363. The references by the Court a quo to sec. 135 (2) and the cases of Holman Bros. and Wassenaar are irrelevant and inapposite because sec. 135 (2) specifically gives the Registrar power to apply for 'rectification', not so sec. 136 where he can never be dominus litis; cf. Holman Bros. Ltd v Registrar of D Designs, 1935 T.P.D. at p. 268; Registrar of Trade Marks v Wassenaar, 1957 (4) SA 513, which were both cases concerned with the Registrar as a party whose decision was directly under review. Frederick King & Company's Trade Mark, 9 R.P.C. 350, relied on by the Court a quo is distinguishable from the present case because of the British Act's E definition of 'the Court', because of the nature of the action there brought and because of the influence of STIRLING, J.'s judgment in Re la Compagnie Générale, 8 R.P.C. 446. As to 'the Court', the High Court of England clearly had jurisdiction by the declaratory terms of the relevant statute; see pp. 352, 356, 361, 364, 367. As to the matter F being a claim in rem and not in personam, this was the view in both the Irish and the English Courts; see pp. 353, 359. The reasoning of STIRLING, J., in Re la Compagnie Générale, supra, is not applicable in the Republic as between the various Divisions of our Supreme Court because its judgments, wherever given, are to-day fully effective throughout the Republic as a matter of execution; see secs. 25 and 26 of Act 59 of 1959. This Court should, therefore, not follow King's case, G supra, as an authority. Ex parte Gould and Another, 1929 W.L.D. 136; Ex parte Hansmann, 1938 W.L.D. 89, cited by the Court a quo, are of no persuasive force because the official concerned was not, as in the instant case, directly subject to the jurisdiction of the Supreme Court. H The cases are, at any rate, not correctly decided, as to which see Ex parte Greet, 1934 NPD 118; Ex parte van Zyl, 1942 OPD 42; Ex parte le Roux, 1942 OPD 46. The latter cases are correctly decided on the principles of the subservience of an administrative official to any Provincial Division in the Republic. The Registrar of Trade Marks is, although for purposes of convenience geographically 'resident' within the Transvaal, not in law on the same footing as other officials, e.g. the Registrar of Deeds, The Master of the Supreme Court or the
1963 (3) SA p344
Registrar of the Province of the Transvaal in Pretoria, as in Gould's case, supra at p. 137, and Hansmann's case, supra at p. 91. In those cases the Witwatersrand Local Division could not have given an A 'effective order' because no provision such as Trade Mark Rule 104 existed under the relevant statute. The issue in the present case involved the Registrar not qua quasi-judicial official but merely as an administrative scribe; see Mobbs' case, supra at pp. 361 - 4. The second ground on which jurisdiction was assumed by the Court below was that it had jurisdiction ratione rei sitae, i.e. the 'mark' and the B 'register' are situated at Pretoria and the claim was an actio in rem, Policansky's case, 1935 AD at p. 101, being relied on. It is conceded that a 'trade mark' is also such a right enforceable against the whole world, especially if it is a registered mark. But non constat that every action connected with it is an action in rem. An action for C infringement of a mark is clearly not in rem nor one for damages for passing-off. These actions concern the mark yet they do not necessarily amount to actiones in rem because no dominium in...
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