Valentino Globe BV v Phillips and Another

• Jurisdiction: South Africa
• Judge: Hefer JA, Nienaber JA, Howie JA, Harms JA, Plewman JA
• Judgment Date: 27 May 1998
• Citation: 1998 (3) SA 775 (SCA)
• Docket Number: 6/96
• Hearing Date: 12 May 1998
• Counsel: P Ginsburg (with him A De Vos) for the appellant No appearance for the respondents
• Court: Supreme Court of Appeal

Valentino Globe BV v Phillips and Another
1998 (3) SA 775 (SCA)

1998 (3) SA p775

Citation	1998 (3) SA 775 (SCA)
Case No	6/96
Court	Supreme Court of Appeal
Judge	Hefer JA, Nienaber JA, Howie JA, Harms JA, Plewman JA
Heard	May 12, 1998
Judgment	May 27, 1998
Counsel	P Ginsburg (with him A De Vos) for the appellant; No appearance for the respondents

Flynote : Sleutelwoorde

Trade mark — Expungement of — Application for removal of trade mark from register — 'Person aggrieved' in context of application for removal of trade mark from register in terms of s 36 of Trade Marks Act 62 of 1963 — Who is — Applicant failing to distinguish between himself and companies and close corporation in which he had interest — Clear intention F in Act not to allow piercing of the corporate veil — Applicant lacking locus standi to bring application for removal.

Practice — Applications and motions — Objection in limine that founding affidavits not making out prima facie case for relief claimed — Approach by Court — Wrong to permit use of such procedure, without reference to other affidavits filed, where there is no real conflict of fact on papers — Analogy between this procedure and exception procedure G inappropriate — Comparison should rather be with application for absolution from instance in trial action.

Headnote : Kopnota

The onus rests upon the applicant for the removal of a registered trade mark from the register to establish, as a H 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 interest in the mark or must substantially be damaged by its remaining on the register. The fact that the registered mark constitutes an obstacle to the registration of a mark applied for by the applicant is I 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. If the applicant for removal neither traded nor had any genuine intention to trade in goods in the relevant class, it means that it is not a person aggrieved (although this does not necessarily apply to an application for defensive registration). (At 781B/C--E/F.) J

1998 (3) SA p776

The appellant was the proprietor of the registered trade mark 'Valentino'. It had not itself conducted any business A in South Africa, nor had any user agreement in terms of the Trade Marks Act 62 of 1963 been registered. The first respondent (P) had lodged, in his own name, an application for the registration of the same trade mark in the same class. Due to the impediment of the existing trade mark, P applied, in terms of s 36 of the Act, for its B removal on the ground of non-usage (the second respondent being the Registrar of Trade Marks). In his founding affidavit P had averred that the mark 'Valentino' was used by a company, of which he was the managing director, and in his replying affidavit (filed sometime thereafter) that the mark had been used by a further company and a close corporation, both of which he controlled. The appellant had argued in the Court a quo, on the basis of the C founding affidavit alone, that P lacked locus standi in that he was not a 'person aggrieved' by the registration of the mark. The appellant also endeavoured to do so on appeal.

Held, that it was wrong to permit the use of the procedure whereby the respondent in a Court of first instance argued at the outset that the founding affidavit did not make out a prima facie case for the relief claimed, without reference to other affidavits filed, where there was no real conflict of fact on the papers. (At 779I--I/J.) D

Held, further, that the analogy between this procedure and the exception procedure might have been inappropriate and the comparison should rather have been made with an application for absolution from the instance in a trial action. Having lost an application for absolution from the instance, a defendant could not E thereafter lead evidence and on appeal have argued that absolution should not have been granted at the end of the plaintiff's case. (At 779J--780B.)

Held, further, that it was clear that P had neither traded nor had had any intention of trading under the mark 'Valentino'. P had simply failed to distinguish between himself and companies and close corporations in which he F had some undisclosed interest and with which he had some undefined relationship. (At 781E/F--F/G.)

Held, further, that the repeal in 1971 of certain sections of the Act which had permitted piercing of the corporate veil indicated a clear intention not to allow the piercing of the corporate veil. (At 782E--G, paraphrased.)

Held, accordingly, that there was no prospect that P could have succeeded in his application for the registration G of 'Valentino', either in his own name or in that of another. This had meant that P was not a person 'aggrieved' and his application for the removal of the appellant's trade mark should not have succeeded. (At 783A/B--B/C.) Appeal upheld.

The decision in the Transvaal Provincial Division in Phillips v Valentino Globe BV and Another reversed. H

Cases Considered

Annotations

Reported cases

Adcock-Ingram Laboratories Ltd v SA Druggists Ltd and Another; Adcock-Ingram Laboratories Ltd v Lennon Ltd 1983 (2) SA 350 (T): referred to

Bader and Another v Weston and Another 1967 (1) SA 134 (C): compared I

Berman Brothers (Pty) Ltd v Sodastream Ltd and Another 1986 (3) SA 209 (A): referred to

Consort Trade Mark [1980] RPC 160: referred to

Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another 1991 (4) SA 850 (A): applied

Francis George Hill Family Trust v South African Reserve Bank and Others 1992 (3) SA 91 (A): applied J

1998 (3) SA p777

Hart v Pinetown Drive-in Cinema (Pty) Ltd 1972 (1) SA 464 (D): referred to A 'Holly Hobby' Trade Mark [1984] RPC 329 (HL): compared

Hubby's Investments (Pty) Ltd v Lifetime Properties (Pty) Ltd 1998 (1) SA 295 (W): dictum at 297A-E doubted

Jeeva and Another v Tuck NO and Others 1998 (1) SA 785 (SE): referred to

Kaiser Aluminum & Chemical Corporation v The Reynolds Metal Company 120 CLR 136: referred to B

Mars Incorporated v Candy World (Pty) Ltd 1991 (1) SA 567 (A): applied

Pearson v Magrep Investments (Pty) Ltd and Others 1975 (1) SA 186 (D): referred to

Ritz Hotel Ltd v Charles of the Ritz Ltd and Another 1988 (3) SA 290 (A): applied

Sodastream Ltd and Another v Berman Brothers (Pty) Ltd 1984 (4) SA 425 (T): referred to. C

Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A): referred to

Statutes Considered

Statutes

The Trade Marks Act 62 of 1963, s 36: see Juta's Statutes of South Africa 1994 vol 2 at 2-186--2-187. D

Case Information

Appeal from a decision in the Transvaal Provincial Division (Smit J). The facts appear from the judgment of Harms JA.

P Ginsburg SC (with him A de Vos SC) for the appellant.

No appearance for the respondents. E

In addition to the authorities cited in the judgment of the Court, counsel for the parties referred to the following authorities:

AA Onderlinge Assuransie-Assosiasie Bpk v De Beer 1982 (2) SA 603 (A) at 620E-G

Adcock-Ingram Laboratories Ltd v SA Druggists Ltd and Another 1982 (1) SA 856 (T) F

Bernstein Manufacturing Co (1961) (Pvt) Ltd v Sheperdson 1968 (4) SA 386 (T) at 388E

Bostitch Trade Mark [1963] RPC 183 (Ch)

Caswell v Powell Duffryn Associated Collieries Ltd [1940] AC 152 (HL) at 169 ([1939] 3 All ER 722 at 733E) G

In re Ducker's Trade Mark [1928] RPC 105 (Ch)

In re Ducker's Trade Mark [1929] 1 Ch 113 (CA) ([1928] 45 RPC 397)

GE Trade Mark [1970] RPC 339 (CA)

Hyperchemicals International (Pty) Ltd and Another v Maybaker Agrichem (Pty) Ltd and Another 1992 (1) SA 89 (T) at 92F-I H

Khumalo v Director-General of Co-operation and Development and Others 1991 (1) SA 158 (A) at 168A-C

McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another; McDonald's Corporation v Dax Prop CC and Another; McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Dax Prop CC 1997 (1) SA 1 (A) at 27I, 32A-E I

Ex parte The Minister of Justice: In re R v Jacobson & Levy 1931 AD 466 at 478

Moosa Bros and Sons (Pty) Ltd v Rajah 1975 (4) SA 87 (D) at 93F

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