Brian Boswell Circus (Pty) Ltd and another v BoswellWilkie Circus (Pty) Ltd
1985 (4) SA 466 (A)
594
Broadway Pen Corporation v Wechsler & Co (Pty) Ltd 1963 (4) SA 434 (T)
602
Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd [1998] 3 All
SA 175 (1998 (3) SA 938) (SCA)
593
Geary & Son (Pty) Ltd v Gove 1964 (1) SA 434 (A)
594
James Brown & Hamer (Pty) Ltd (previously named Gilbert Hamer & Co Ltd)
v Simmons NO 1963 (4) SA 656 (A)
592
Matthews and others v Young 1922 AD 492
594
Oils International (Pty) Ltd v Wm Penn Oils Ltd 1965 (3) SA 64 (T)
602
Oils International (Pty) Ltd v Wm Penn Oils Ltd 1966 (1) SA 311 (A)
602
P Lorillard Co v Rembrandt Tobacco (Co) (Overseas) Ltd 1967 (4) SA 353
(T)
603
PlasconEvans Paints Limited v Van Riebeeck Paints (Pty) Ltd
1984 (3) SA 623 (A)
592
Schultz v Butt 1986 (3) SA 667 (A)
594
Sportshoe (Pty) Ltd v Pep Stores (SA) (Pty) Ltd 1990 (1) SA 722 (A)
593
Tie Rack Plc v Tie Rack Stores (Pty) Ltd and another 1989 (4) SA 427 (T)
603
Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A)
603
United Kingdom
AL ASSAM Trade Mark [1995] RPC 511 (CA)
594
GE Trade Mark [1973] RPC 297 (HL)
594
Pinto v Badman [1891] RPC 181 (CA)
594
Star Industrial Co Ltd v Yap Kwee Kor (t/a New Star Industrial Co) [1976]
FSR 256 (PC)
594
Page 590 of [2005] 2 All SA 588 (T)
Judgment
SOUTHWOOD J
[1] The applicant seeks an order in terms of section 24(1) read with subsections 10(3), 10(7) and 10(12) of the
Trade Marks Act 194 of 1993 ("the Act") expunging from the register, trade mark 1998/18119 JACOBSEN'S
(Special Form) in class 35 and trade mark 1998/18120 JACOBSEN'S (Special Form), both registered in the
name of the first respondent.
[2] The background to this matter, very briefly, is as follows: the applicant is Butterworths Publishers (Pty)
Limited, a publisher of legal and academic works. During October 1998 the applicant purchased the assets,
goodwill and business of Jacobsen's Publishers (Pty) Ltd ("Jacobsen's Publishers") as a going concern. The
assets of the business included copyright in the works published by Jacobsen's Publishers: Jacobsen's
Harmonised Customs & Excise Tariff Book; Jacobsen's Customs & Excise Rules and Prohibited Goods Index
and Jacobsen's Guide to Classification. All were, and still are, standard works in the field. From the date of
acquisition of the business the applicant published and distributed the works under the name JACOBSEN'S in
a stylised form. The first respondent is the registered proprietor in terms of the Act of trade mark 1998/18119
JACOBSEN'S (Special Form) in class 35 in respect of "advertising; business management; business
administration; office functions; offering for sale and the sale of goods in the retail and wholesale trade" and
trade mark 1998/18120 JACOBSEN'S (Special Form) in class 36 in respect of "insurance; financial affairs;
monetary affairs; real estate affairs". The first respondent applied for registration of these trade marks on 14
October 1998. The trade marks are identical to the trade mark used by the applicant. The first respondent
was incorporated as Cargo Card Holdings CC on 22 March 1994. Its principal object was to hold various
assets and investments including, but not limited to, trade marks. The first respondent converted to a private
company and then changed its name to Jacobsens Holdings (Pty) Ltd. The first respondent has not at any
time conducted business using the trade marks. On 6 February 2003 attorneys Wertheim Becker, on behalf of
the first respondent, addressed a letter to the applicant alleging that the applicant was infringing the trade
marks; demanding the removal of the infringing mark from all material produced or distributed by the
applicant, alternatively, delivery up, failing which the first respondent would institute infringement
proceedings. On 7 March 2003 attorneys Beall Chaplin & Hathorn, on behalf of the applicant, answered this
letter. They pointed out that the applicant had purchased Jacobsen's Publishers' business as a going concern,
that the assets of the business included the trade marks JACOBSEN'S and JACOBSEN'S PUBLISHERS, that the