Victoria's Secret Inc v Edgars Stores Ltd

• Jurisdiction: South Africa
• Judge: Corbett CJ, E M Grosskopf JA, Goldstone JA, Harms JA and Nicholas AJA
• Judgment Date: 28 March 1994
• Docket Number: 428/92
• Court: Appellate Division
• Hearing Date: 08 March 1994
• Citation: 1994 (3) SA 739 (A)

Nicholas AJA:

This appeal is against a decision of the Assistant Registrar of Trade Marks. Section 17(3) of the Trade Marks Act 62 of 1963 ('the Act') provides:

H '17(3) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks that so resemble each other that the use of such trade marks in relation to goods or services in respect of which they are respectively sought to be registered would be likely to deceive or cause confusion, the Registrar may refuse to register any of them until the rights of those persons have, upon application in the prescribed manner, been determined by him, or have been I settled by agreement in a manner approved by him.'

Edgars Stores Ltd ('Edgars'), a South African company, and Victoria's Secret Inc ('VS Inc'), a corporation organised and existing under the laws of the State of Delaware in the United States of America, each made a number of applications to be registered as proprietor of the trade mark J Victoria's Secret ('VS'), namely:

Nicholas AJA A

Applicant	Date	No	Class
Edgars	7 February 1986	86/0772	25
	11 August 1986	86/5207	3
	17 June 1987	87/4324	42
VS Inc	14 September 1987	87/7083	3
	14 September 1987	87/7084	25
	14 September 1987	87/7085	42

The trade marks for which Edgars and VS Inc applied were substantially identical.

Acting in terms of s 17(3), the Registrar of trade marks refused to C register any of the marks until the rights of the competing applicants had been determined by him, and under reg 22(1) of the Trade Mark Regulations 1971 he called upon them to apply on Trade Mark Form TM 41 for their rights to be determined.

The competing applicants duly filed applications on Form TM 41 and D subsequently filed statements of case and supporting affidavits, and ultimately affidavits in reply. The deponent to the affidavits filed on behalf of Edgars was George Henry Beeton, a director of Edgars. The deponent to the main affidavits filed on behalf of VS Inc was Howard Gross, the president and chief executive officer of VS Inc, which is the registered proprietor of a number of VS trade marks in the United States.

E The applications for a determination of rights were in due course argued before the Assistant Registrar of Trade Marks. On 28 April 1992 she made an order that

'. . . trade mark applications No 86/0772 in class 25, 86/5207 in class 3 and 87/4324 in class 42 may proceed to registration, subject to the disclaimer of the word "secret" and the association of the marks with each F other. Trade mark applications No 87/7083-5 in classes 3, 25 and 42 are refused.'

VS Inc was directed to pay the costs.

The parties having lodged with the Registrar of Trade Marks their consent thereto in terms of s 63(5) of the Act, VS Inc now appeals direct to this G Court against the decision of the Assistant Registrar of Trade Marks.

The law

Under s 17(3) of the Act read with reg 22 the Registrar was called upon to determine the rights of the competing applicants. Having done so he was H empowered by subreg (4) to 'direct that one or more of the applications shall be accepted without limitation, as he may think fit, and that one or more shall be refused'. The first and main enquiry is one into the proprietorship of the trade mark VS.

Section 20 of the Act provides in ss (1) and (4):

'(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him and who is desirous of registering it, shall I apply to the Registrar in the prescribed manner for registration and the application shall be accompanied by the fee prescribed.

. . .

(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, J modifications, conditions or limitations, if any, as he may deem fit.'

Nicholas AJA

A Section 20(1) has given rise to problems of interpretation which have been discussed in a number of cases, namely Broadway Pen Corporation and Another v Wechsler & Co (Pty) Ltd and Others 1963 (4) SA 434 (T) at 444; Oils International (Pty) Ltd v Wm Penn Oils Ltd 1965 (3) SA 64 (T) at 70-1, and on appeal, Wm Penn Oils Ltd v Oils International (Pty) Ltd 1966 (1) SA 311 (A) B at 317F-G; and P Lorillard Co v Rembrandt Tobacco Co (Overseas) Ltd 1967 (4) SA 353 (T) at 356D-F. These cases were referred to by the Honourable W G Trollip, a distinguished member of this Court between 1969 and 1982, in the written statement which was attached to the 'Determination' under s 17(3) of the Act which he made as hearing officer appointed under s 6(2A) of the Act in the contested matter of Moorgate C Tobacco Co Ltd v Philip Morris Incorporated, and which was delivered on 21 May 1986. I shall refer to the written statement as 'the Moorgate judgment'.

By the words 'claiming to be the proprietor of a trade mark' in s 20(1) is meant 'asserting a claim to be the proprietor of a trade mark'. The word D 'proprietor' (which is not defined in the Act) is not here used in relation to a common-law right of property. Nor does it import ownership of the 'mark' as such. In terms of the definition in s 2(1) of the Act,

'"mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof or a container for goods'.

E Some of the things included are not new coinages but are part of the common currency. It follows that it is not a prerequisite to a claim to proprietorship that the mark should be an 'invention' (as under the Patents Act) or 'original' (as under the Copyright Act). The mark may be a well-known word or phrase. (Compare the observation of Colman J in Oils International (supra at 71A).) F

One of the dictionary meanings of 'proprietor' is 'one who has the exclusive right or title to the use . . . of a thing' (The Shorter Oxford English Dictionary sv 'proprietor' 2). It is in that sense, I think, that the word is used in the Act. Thus, s 44 provides that the rights acquired by registration of a trade mark shall be infringed by unauthorised use as G a trade mark. Section 2(1) of the Act provides that

'"trade mark" . . . means a mark used or proposed to be used in relation to goods or services for the purpose of -

(a) indicating a connection in the course of trade between the goods or services and some person having the right, either as proprietor or as H a registered user, to use the mark, whether with or without any indication of the identity of that person; and

(b) distinguishing the goods or services in relation to which the mark is used or proposed to be used, from the same kind of goods or services connected in the course of trade with any other person'.

In terms of s 20(1) one can claim to be the proprietor of a trade mark if I one has appropriated a mark for use in relation to goods or services for the purpose stated, and so used it. (I use the verb appropriate in its meaning of 'to take for one's own'. It is a compendious expression which comprehends the words favoured by Mr Trollip in the Moorgate judgment, namely originate, acquire and adopt.)

J Section 20(1) applies not only to a person claiming to be the proprietor

Nicholas AJA

A of a trade mark used by him, but also to a person claiming to be the proprietor of a trade mark proposed to be used by him.

The meaning of the verb propose which is relevant in the context is that given by The Shorter Oxford English Dictionary in definition 3b, namely

'to put before one's own mind as something that one is going to do; to design, purpose, intend'. B

The word was introduced into English trade marks legislation in s 3 of the Trade Marks Act 1905. (See Kerly Law of Trade Marks and Trade Names 12th ed para 2-04 at 7.)

(The question does not now arise whether an uncommunicated proposal to use a trade mark can be said to amount to a proposal in the context of s 20(1).) C

In Imperial Group Ltd v Philip Morris & Co Ltd [1982] 8 FSR 72 (CA) Shaw LJ observed at 82 that:

'Where the mark for which registration is sought is one not already in use but "proposed to be used in relation to goods for the purpose of indicating . . . a connexion in the course of trade between the goods and D some person having the right . . . to use the mark", the existence of this element has to be taken on trust when the application for registration is put forward.'

Where however the question of proprietorship is in issue, there must be borne in mind the guidelines to the meaning of 'proposed to be used' which E were given in the judgment of Lord Hanworth MR in In re Ducker's Trade Mark [1929] 1 Ch 113 (CA) ([1928] 45 RPC 105) at 121, namely

'. . . a man must have an intention to deal, and meaning by the intention to deal some definite and present intention to deal, in certain goods or descriptions of goods. I agree that the goods need not be in being at the moment, and that there is futurity indicated in the definition; but the F mark is to be a mark which is to be definitely used or in respect of which there is a resolve to use it in the immediate future upon or in connection with goods. I think that the word "proposed to be used" mean a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered.'

G In the Moorgate judgment Mr Trollip stated that

'. . . a trade mark is purely a territorial concept; it is legally operative or effective only within the territory in which it is used and for which it is to be registered. Hence, the proprietorship, actual use, or proposed use of a trade mark mentioned in s 20(1) are all premised by the...