Victoria's Secret Inc v Edgars Stores Ltd

• Jurisdiction: South Africa
• Citation: 1994 (3) SA 739 (A)

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

1994 (3) SA p739

Citation	1994 (3) SA 739 (A)
Case No	428/92
Court	Appellate Division
Judge	Corbett CJ, E M Grosskopf JA, Goldstone JA, Harms JA and Nicholas AJA
Heard	March 8, 1994
Judgment	March 28, 1994

Flynote : Sleutelwoorde B

Trade mark — Registration of — Trade Marks Act 62 of 1963, s 20(1) — Words 'claiming to be the proprietor of a trade mark' in s 20(1) meaning 'asserting a claim to be the proprietor of a mark' — 'Proprietor' not used in relation to common-law right of property — Also not importing ownership C of trade mark — Words used in sense of 'one who has exclusive right or title to the use of a thing' — Person may claim to be proprietor of trade mark in terms of s 20(1) if he has appropriated mark for use in relation to goods or services for purposes stated, and so used it — 'Appropriate' in such context comprehending 'originate', 'acquire' and 'adopt'.

D Trade mark — Registration of — Trade Marks Act 62 of 1963, s 20(1) — Applying to person claiming to be proprietor of trade mark 'proposed to be used by him' — 'Proposed' in such context meaning 'to put before one's mind as something that one is going to do; to design, purpose, intend' — When question of proprietorship in issue, following guidelines to meaning of 'proposed to be used' to be borne in mind - Must be some definite and E present intention to deal — While goods need not be in being at time, there must not be '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'.

Trade mark — Registration of — Trade Marks Act 62 of 1963, s 20(1) — Trade F mark a purely territorial concept — Proprietorship, actual use or proposed use of trade mark mentioned in s 20(1) thus premised to be within South Africa — Fact that a trade mark registered in foreign country therefore not in itself barring adoption and registration of trade mark by some other person in South Africa — Copying of another's ideas, devices or G trade marks not in law per se illegitimate — In case of foreign trade mark, there is no legal bar to its adoption in South Africa unless attended by something more — Factors relevant to determination of applicant's claim to proprietorship of trade mark include dishonesty, breach of confidence, sharp practice and the like. H

Trade mark — Registration of — Trade Marks Act 62 of 1963, s 17(3) — Competing applications by different persons for registration as proprietors of trade marks so resembling each other that use thereof in relation to goods and services likely to deceive or cause confusion — In determining which of competing claims to proprietorship should prevail, I rule is that, all else being equal, application prior in time to filing should prevail.

Headnote : Kopnota

Section 20(1) of the Trade Marks Act 62 of 1963 provides that '(a)ny person claiming to be the proprietor of a trade mark used or proposed to be used by him . . . shall apply to the Registrar . . . for registration . . .'. The words 'claiming to be the proprietor of a trade mark' mean J 'asserting a claim to be the proprietor of a mark'. (At 736C/D-D.)

1994 (3) SA p740

A The word 'proprietor' is not in s 20(1) used in relation to the common-law right of property; nor does it import ownership of the mark as such. It appears to be used in the sense of 'one who has the exclusive right or title to the use . . . of a thing'. In terms of s 20(1) one can claim to be the proprietor of a trade mark if one has appropriated a mark for use in relation to goods or services for the purposes stated, and so used it ('appropriate' in this context comprehending 'originate', 'acquire' and 'adopt'). (At 736D, F-F/G and I-J.) B

Section 20(1) also applies to a person claiming to be the proprietor of a trade mark 'proposed to be used by him', the word 'proposed' in this context meaning 'to put before one's mind as something that one is going to do; to design, purpose, intend'. When the question of proprietorship is in issue, the following guidelines to the meaning of 'proposed to be used' must be borne in mind: there must be some definite and present intention to deal; while the goods need not be in being at the time, there must not C be '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' (In re Ducker's Trade Mark [1929] 1 Ch 113 (CA) at 121). (At 736J-737B and 737D/E-G.)

Since a trade mark is a purely territorial concept, the proprietorship, actual use, or proposed use of a trade mark mentioned in s 20(1) are D premised by the subsection to be within South Africa. It follows, therefore, that the fact that a trade mark is registered in a foreign country does not in itself constitute a bar to its adoption and registration by some other person in South Africa. While it is considered by some that any form of copying another's ideas, devices or trade marks is morally reprehensible, it is not the law that such copying is per se illegitimate. In the case of a foreign trade mark there is no legal bar to its adoption in South Africa unless it is attended by something more. Factors relevant to the determination of an applicant's claim to E proprietorship of a trade mark include dishonesty, breach of confidence, sharp practice or the like. (At 737G-H/I, 738C, F/G and 739H-I.)

In terms of s 17(3) of the Act, where separate applications are made by different persons to be registered as proprietors of trade marks that so resemble each other that the use of such marks in relation to the goods or services in respect of which they are sought to be registered would be F likely to deceive or cause confusion, the Registrar may refuse to register any of the marks until the rights of the competing applicants have been determined. In determining which of competing claimants should prevail, the rule is that, all else being equal, the application prior in time of filing should prevail and be entitled to proceed to registration. (At 744D/E-E/F.)

Case Information

Appeal from a decision of the tribunal of the Registrar of Trade Marks. The facts appear from the judgment of Nicholas AJA. G

C E Puckrin SC (with him M M Jansen) for the appellant referred to the following authorities: Tjospomie Boerdery (Pty) Ltd v Drakensberg Botteliers (Pty) Ltd and Another 1989 (4) SA 31 (T) at 36E; Wham-O Manufacturing Co v Lincoln Industries Ltd [1984] RPC 125 at 184-5; The Seven Up Co v OT Ltd and Another (1947) 75 CLR 203 at 211; Re C & A Trade H Mark, Cotura Fashions Ltd v C & A Modes, Assistant Commissioner Martin 9 November 1984 at 97-8; Re Registered Trade Mark; Ex parte Amalgamated Tobacco Corp Ltd (1950) 82 CLR 199; Thunderbird Trade Mark [1976] RPC 285 at 292 et seq; Vitamins Ltd's Application [1956] RPC 7; Brown Shoe Company Inc's Application [1959] RPC 29 (Ch); Broadway Pen Corporation and Another v Wechsler & Co (Pty) Ltd and Others 1963 (4) SA 434 (T); P Lorillard Co v I Rembrandt Tobacco Co (Overseas) Ltd 1967 (4) SA 353 (T); Oils International (Pty) Ltd v Wm Penn Oils Ltd 1965 (3) SA 64 (T) at 71C-G; Slenderella Systems Inc of America v Hawkins and Another 1959 (1) SA 519 (W) at 521A-B, 522A; Protective Mining & Industrial Equipment Systems v Audiolens (Pty) Ltd 1987 (2) SA 961 (A); Cambridge Plan AG and Cambridge J Diet (Pty) Ltd v Moore 1987 (4) SA 821 (D) at 847I-848A; H P

1994 (3) SA p741

A Bulmer Ltd & Showerings Ltd v J Bollinger SA and Another [1978] RPC 79 (CA) at 93, 94; Star Industrial Company Ltd v Yap Kwee Kor [1976] FSR 256; John Craig (Pty) Ltd v Dupa Clothing Industries (Pty) Ltd 1977 (3) SA 144 (T) at 155E-F; Receiver of Revenue (Cape) v Cavanagh 1912 AD 459; Herman v Faclier 1949 (4) SA 377 (C); Inland Revenue Commissioners v Muller & Co's B Margarine Ltd [1901] AC 217 at 224; Tie Rack plc v Tie Rack Stores (Pty) Ltd and Another 1989 (4) SA 427 (T) at 444-7; Brian Boswell Circus v Boswell-Wilkie Circus 1985 (4) SA 466 (A) at 479; Union Wine Ltd v E Snell & Co Ltd 1990 (2) SA 180 (D) at 183; Hyperama (Pty) Ltd v O K Bazaars (1929) Ltd under case 20/88 (unreported); C & A Modes and Another v C & A (Waterford) Ltd and Others [1978] FSR 126 at 138-9; Capital Estate and C General Agencies (Pty) Ltd and Others v Holiday Inns Inc and Others 1977 (2) SA 916 (A); The Athletes' Foot Marketing Associates Inc v Cobra Sports Ltd and Another [1980] RPC 343 at 349; Brestian v Try [1958] RPC 161; Charter Allen Ltd v Mercantile Credit Ltd [1979] EIPR 72; Panhard et Levassor (Société Anonyme) v Panhard-Levassor Motor Co Ltd [1901] 18 RPC D 405; Sheraton Corp of America v Sheraton Motels Ltd [1964] RPC 202; A Bernadin et Cie v Pavilion Properties Ltd [1967] RPC 581; Baskin-Robbins Ice-Cream Co v Gutman [1976] FSR 545; Maxim's Ltd v Dye [1977] WLR 1155 (Ch) ([1978] 2 All ER 55); Anheuser-Busch Inc v Budejovicky Budvar NP [1984] FSR 413; Orkin Exterminating Co Inc v Pestco of Canada Ltd 50 OR E (2nd) 726 (1985); Tan-Ichi Co Ltd v Jancar Ltd and Others [1990] FSR 151; Pioneer Hi-Bred Corn Co v Hy-Line Chicks (Pty) Ltd [1979] RPC 410; Pepsico Inc v United Tobacco Co Ltd 1988 (2) SA 334 (W); Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and Others 1981 (2) SA 173 (C) at 178-86; Elida Gibbs Ltd v Colgate Palmolive Ltd [1983] FSR 95; Schultz v Butt 1986 (3) SA 667 (A) at 682F, 683A; Kerly The Law of Trade Marks 12th F ed at 4-02, 4-03; Brown and Grant The Law of Intellectual Property in New Zealand (1989) at 20-2, 23 n 17; Shanahan Australian Trade Mark Law and Practice 2nd ed at 156-7, 161-2; Webster and Page South African Law of Trade Marks, Unlawful Competition, Company Names and Trading Styles 3rd ed at 85, 174, 397, 474-5...