Spier Estate v Die Bergkelder Bpk and Another

• Jurisdiction: South Africa
• Judge: King J
• Judgment Date: 23 June 1987
• Hearing Date: 25 March 1987
• Court: Cape Provincial Division

King J:

There is pending in this Division an application brought in terms of s 44 of the Trade Marks Act 62 of 1963 by Die Bergkelder Bpk ('Bergkelder') against Spier Estate ('Spier') which is based on an B alleged infringement by Spier of Bergkelder's rights in a certain container trade mark.

Spier now seeks to bring a counter-application, also in this Division, for rectification of the register of trade marks by way of expungement for non-user (s 36), alternatively for variation by partial cancellation C (s 33), of the trade mark. The Registrar of Trade Marks ('the Registrar') has been joined in this counter-application as a second respondent. His attitude is that he abides the judgment of this Court. I shall assume that in so doing he (the Registrar) does not submit to this Court's jurisdiction.

Ordinarily, and subject to what is said infra, a counter-application D would be a procedurally acceptable method of dealing with a matter such as this - see Herbert Evans & Co v Henckel and Cie GmbH; Henckel and Cie GmbH v Herbert Evans & Co 1962 (1) SA 8 (T) at 11 - 12; see also Oude Meester Groep Bpk and Another v SA Breweries Ltd; SA Breweries Ltd and Another v Distillers Corporation (SA) Ltd and Another 1973 (4) SA 145 (T); Heublin Inc and Another v Golden Fried Chicken (Pty) Ltd 1982 (4) SA 84 (T). However, Bergkelder opposes the counter-application on the following basis: E

'A.

A proceeding for the rectification of the register of trade marks in respect of trade mark 77/0647, or the cancellation of that trade mark, is a proceeding in rem and the res, being the register of trade marks, is located in Pretoria in the Transvaal Province.

B.

F The second respondent is a true respondent in a proceeding for the rectification of the register of trade marks or the cancellation of a registered trade mark and is located in Pretoria in the Transvaal Province.

C.

G Accordingly the Transvaal Provincial Division of the Supreme Court of South Africa has exclusive jurisdiction to determine an application for the rectification of the register in respect of trade mark 77/0647, or the cancellation of that trade mark.

D.

In the premises the above honourable Court does not have jurisdiction in respect of such proceeding.'

H In Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk 1963 (2) SA 10 (T) the issue before the Court was the jurisdiction of that Court (ie the Transvaal Provincial Division) to grant an order directing and authorising the Registrar of Trade Marks to rectify the register by removal of a trade mark therefrom. The case was heard in I terms of the previous Act which, like the current Act, makes no special provision as to such jurisdiction. The Court (Trollip J) held that the Transvaal Court had jurisdiction having regard to the nature of the relief claimed. It was further held that, insofar as the respondent held real rights, the proceedings were accordingly in rem and thus the forum rei sitae would have jurisdiction and such forum was the Transvaal Court as the situs of the right was where the registry was located; the J Appellate Division

King J

A (see 1963 (3) SA 341 (A)) upheld the judgment a quo on the ground that the Transvaal Court was the forum rei sitae. Neither Court found it necessary to decide whether, if the rights in issue were to be regarded as movable, the Cape Provincial Division as the admitted Court of the domicile would have concurrent jurisdiction, as the applicant was entitled to choose his Court. The question which faces me was B accordingly left open.

The general principles of our law of jurisdiction are set out in the judgment of Trollip JA in Estate Agents Board v Lek 1979 (3) SA 1048 (A). I take the liberty of quoting a passage from this judgment in extenso (at 1063D - 1064A):

C 'It follows that, merely because under the Supreme Court Act 59 of 1959 the notice of motion issued out of the Court a quo in the present proceedings was effectively served on the Board in Johannesburg and any judgment or order given by it can be effectively executed (if it is executable) against it, it does not mean that the Court a quo had jurisdiction to hear and determine these proceedings. Some ratio jurisdictionis according to common law had also to be present before it D could be held that the "cause" was one "arising" within the area of jurisdiction of the Court a quo in terms of s 19(1) of the Supreme Court Act of 1959. The Court a quo correctly also adopted that approach (1978 (3) SA at 167F - H).

I therefore turn to consider whether the Court a quo had jurisdiction in these proceedings according to the general principles of our law. That depends on (a) the nature of the proceedings, (b) the nature of the E relief claimed therein, or (c) in some cases, both (a) and (b). These different approaches are dealt with in Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk 1963 (2) SA 10 (T). Approach (a) was adopted by Innes J in Steytler's case 1911 AD at 315 - 16. The inquiry was, he said, whether by its nature, the action was personal, real, or mixed. De Villiers JP adopted approach (b) at 346 - 7; and (c) was applied in the Gulf Oil case. Approach (b) is based on the principle of F effectiveness - the power of the Court, not only to grant the relief claimed, but also to effectively enforce it directly within its area of jurisdiction, ie without any resort to the procedural provisions in the Supreme Court Act of 1959 canvassed above. That approach is usually adopted where the problem arises as to which of the Divisions of our Supreme Court has jurisdiction in a cause arising within the Republic G (see the Gulf Oil case supra at 20 in fin where the authorities are collected, including Sonia (Pty) Ltd v Wheeler 1958 (1) SA 555 (A) at 563C - F). But, of course, it does not necessarily follow that, because a Division has jurisdiction by reason of the application of that principle of effectiveness, such jurisdiction is exclusive (cf the Gulf Oil case at 21G - H and Sonia's case at 560H). To decide whether another Division also has jurisdiction to hear the matter, approach (a) - the nature of H the proceedings - can also be adopted and the procedural provisions of the Supreme Court Act of 1959 be regarded.'

The following passage in the judgment of Hoexter JA in the unreported decision of Hugo v Wessels, Appellate Division case 432/85, is also with respect instructive: J [*]

I 'Ingevolge art 19 van die Wet op die Hooggeregshof 59 van 1959, besit elke Provinsiale of Plaaslike Afdeling van die Hooggeregshof in siviele aangeleenthede...