WM Penn Oils Ltd v Oils International (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Beyers ACJ, van Blerk JA, Rumpff JA, Botha JA and Holmes JA
• Judgment Date: 11 November 1965
• Hearing Date: 05 November 1965
• Court: Appellate Division

Holmes, J.A.: H

This is an unusual case. Two rival traders bona fide, independently, and within a few months of each other, bethought themselves of the same name to designate an identical product which each proposed to market. The one applied to the Registrar of Trade Marks for registration of the name as a mark. The other opposed. The Registrar refused the application. The loser successfully appealed to the Transvaal Provincial Division, which directed registration. The dispute is now before this Court.

In limine the appellant company sought condonation of late noting

Holmes JA

of appeal or, alternatively, leave to appeal. The respondent was not disposed to make any issue of this, and in the circumstances the matter can be adjusted by this Court by granting leave in so far as it may be necessary.

A It is necessary at this stage to refer to the Registrar's powers and duties under the relevant portion of Act 9 of 1916. That Act applies because the application for registration was lodged before the repealing Trade Marks Act, 62 of 1963, came into force; see sec. 3 (2) of the latter Act. Hence the ratio of this judgment must not be taken as necessarily applicable to proceedings under the 1963 Act. In terms of B sec. 110 (1) of Act 9 of 1916

'any person, claiming to be the proprietor of a trade mark, may make application to the registrar for the registration of his trade mark'.

There are certain matters to which the Registrar is obliged by statute to have regard; see, for example, secs. 99, 105 and 140. For the rest, the statute does not stipulate the grounds for granting or refusing C registration, leaving it to the decision of the Registrar, in regard to unopposed applications, with the words, in sec. 111 (4),

'subject to the provisions of this Chapter, the registrar may either accept the application, with or without modifications or conditions, or refuse it'.

See also secs. 113 and 120. With regard to opposed applications, sec. 117 (2) requires the Registrar to

D 'decide whether the application is to be refused or whether it is to be granted either with or without modifications or conditions'.

It is not necessary to discuss the extent of the power of a Court of appeal to interfere with the decision of the Registrar. It is sufficient for the purposes of this case to say that, if the Registrar's decision is vitiated by misdirection, the Court can interfere.

E With that prelude I turn to the facts. I shall refer to the appellant (who was the successful objector before the Registrar) as Penn Oils, and to the respondent as Oils International.

The facts in respect of Oils International are as follows. For some years this company had sold motor oils, including brake fluids produced F by and bearing the trade marks of Unico Chemicals (Pty.), Ltd. Early in 1962 it decided that it should, as a matter of policy, market brake fluids under its own trade mark. About April, 1962, a director thought of the word 'Lifesaver' as being an appropriate mark. Registration as well as manufacture were left in abeyance pending the expected G introduction by the Government of compulsory specifications for automotive brake fluids, and the publication of specifications by the South African Bureau of Standards. When these were believed...