Butterworths Publishers (Pty) Ltd v Jacobsens Group (Pty) Ltd and another
 2 All SA 588 (T)
Transvaal Provincial Division
12 April 2005
BR Southwood J
M Snyman and D Cloete
. Editor's Summary . Cases Referred to . Judgment .
 Intellectual property Trade marks Application for expungement Trade Marks Act 194 of 1993 Section 10(3) A
registered trade mark may be removed from the register if the applicant for registration had no bona fide claim to
 Trade marks Acquisition of Difference between registered and unregistered trade marks An unregistered trade
mark is not capable of being transferred separately from the business or goodwill to which it is attached.
The applicant, a legal and academic publishing company, had purchased as a going concern, the assets, goodwill
and general business of a publishing company owned by the first respondent. Included in the assets, was copyright
in the works published by first respondent's company. From the date of acquisition of the business, the Applicant
published those works under the original name, as was used by the first respondent's company. The registered
owner of the trade marks relating to the publications in question was the first respondent. The said trade marks
were identical to those used by the applicant in its publication of the works. The first respondent had never
conducted business using the trade marks.
Some five years after the applicant begun using the trade marks, the first respondent informed it that it was
infringing the trade mark, and demanded that applicant remove the infringing mark from all material published and
distributed by the applicant. The first respondent disputed applicant's contention that the sale of the business as a
going concern included the trade marks. This led to the present application for expungement of the trade marks
registered by first respondent, from the register of trade marks.
The parties were in dispute as to the use of the trade mark by the first respondent and its companies. The
applicant's stance was that the trade mark in question was an unregistered one, and accordingly that the
purported acquisition of that trade mark, separately from the business or goodwill with which it was associated, by
first respondent was not legally possible. Applicant contended further that it had acquired the trade mark with the
business bought from first respondent, and that the first respondent did not acquire any rights in respect of the
mark. This formed the basis of the argument that the first respondent's registration of the trade marks was contrary
to sections 10(3), 10(7) and 10(12) of the Trade Marks Act 194 of 1993; and they should be expunged.
Held The provisions referred to above state that a registered trade mark may be removed from the register if the
applicant for registration had no bona fide claim to proprietorship; the application for registration was mala fide; or
the mark is inherently deceptive or the use thereof would be likely to deceive or
Page 589 of  2 All SA 588 (T)
cause confusion, be it contrary to law, be it contra bonos mores, or be it likely to give offence of any class of persons.
As a result of the applicant's argument, the Court began by examining the legal position of registered and
unregistered trade marks. One of the most significant differences for purposes of the present dispute, was the fact
that an unregistered trade mark is not capable of being transferred separately from the business or goodwill to
which it is attached. The trade mark in this case was therefore found to have been attached to the goodwill bought
by the applicant, and there was neither a legal nor a factual basis for the alleged disposition of the mark to the first
In the application for expungement, the applicant was successful in proving that the first respondent had no bona
fide claim to proprietorship of the mark. The application accordingly succeeded.
For Trade Marks see:
· LAWSA First Reissue (Vol 29, paras 1306)
Cases referred to in judgment
Breitenbach v Fiat SA (Edms) Bpk 1976 (2) SA 226 (T)