applicant was entitled to use these trade marks, that the first respondent was not entitled to seek
registration of the trade marks and that the applicant would apply for their expungement. On 19 March 2003
Wertheim Becker replied to this letter saying that the first respondent denied that the applicant had acquired
any rights to the trade mark pursuant to the sale agreement and that the first respondent would institute
proceedings for infringement. Despite this warning the first respondent did not institute such proceedings.
The applicant launched this application on 25 July 2004.
Page 591 of [2005] 2 All SA 588 (T)
The second respondent, the Registrar of Trade Marks, does not oppose the application.
[3] The first respondent's defence is that it acquired all the right, title and interest in respect of the trade mark
JACOBSEN'S and was therefore entitled to apply for the trade mark to be registered. In support of this
defence the first respondent alleged that
(1)
Neil Jacobsen and Clive Stirling King (King) entered into an oral agreement (apparently some time
before 22 March 1994) in terms of which a company called Cargo Credit (Pty) Ltd ("Cargo Credit")
acquired from Jacobsen's Publishers "all right, title and interest in relation to the JACOBSEN'S trade
mark";
(2)
on its incorporation on 22 March 1994 the first respondent became the proprietor of "all rights, title and
interests of the mark JACOBSEN'S" and accordingly filed applications for the trade mark JACOBSEN'S on
14 October 1998;
(3)
in September 1998 when Neil Jacobsen informed King that Jacobsen's Publishers wished to sell its
business and that the purchaser wished to have the word JACOBSEN'S deleted from the name of the
company, Jacobsen's Computer Freight Systems (Pty) Ltd ("JCFS"), Neil Jacobsen and King orally agreed
that JCFS would delete the name JACOBSEN'S from its name but that JCFS would continue to trade
under the name JACOBSEN'S COMPUTER FREIGHT SYSTEMS and Cargo Card would still have the right to
use the mark.
All these allegations are denied by the applicant.
[4] The first respondent also disputed the terms of the agreement concluded between Jacobsen's Publishers and
King in 1988 pursuant to which JCFS became entitled to use the mark JACOBSEN'S and that the applicant used
the trade mark JACOBSEN'S after it acquired Jacobsen's Publishers' business in 1998.
Apart from the fact that it is a peripheral issue this issue does not create a dispute of fact which cannot be
resolved on the papers. It is not in dispute that Jacobsen's Publishers permitted JCFS to use the trade mark
JACOBSEN'S for the purposes of its business and in relation to its products. It is also not in dispute that Neil
Jacobsen was a coshareholder and codirector of JCFS while it used the trade mark. As such he was
obviously able to control the use of the trade mark by JCFS. While the word "licence" was not used in the
affidavits that is clearly what the arrangement was.
The first respondent's denial of the applicant's use of the trade mark JACOBSEN'S after the applicant acquired
Jacobsen's Publishers' business in 1998 also does not create a genuine dispute of fact. The first respondent's
denials are not supported by any facts and do not deal pertinently with the applicant's allegations as to the
reputation of the JACOBSEN'S mark in the hands of the applicant. They are also contradicted by the first
respondent's attorney's letter of demand of 6 February 2003 which alleges the use by the applicant of the
trade mark in connection with the applicant's publications, Jacobsen's Harmonised Customs Tariff, Customs
and
Page 592 of [2005] 2 All SA 588 (T)
Excise Rules and Prohibited Goods Index, on an internet site, Jacobsen's On Line and on flyers distributed by
the applicant.
It will accordingly be accepted that JCFS used the trade mark JACOBSEN'S under licence from Jacobsen's
Publishers and that the applicant has used the trade mark in connection with its publications since it acquired
Jacobsen's Publishers' business in 1998.
[5] The first respondent contends that there is a factual dispute in respect of the allegations in support of its
defence which cannot be resolved on the papers and that the court should order that these issues be
referred for the hearing of oral evidence.
The applicant contends that these allegations are so farfetched, clearly untenable and improbable and that
they should be rejected on the papers. The applicant contends further that, in any event, the trade mark
JACOBSEN'S was an unregistered trade mark and accordingly that the purported acquisition of that trade
mark, separately from the business or goodwill with which it was associated, by Cargo Credit and the first
respondent was not legally possible; that the applicant acquired the trade mark with Jacobsen's Publishers'
business and that the first respondent did not acquire any rights in respect of the mark. Accordingly, the
applicant submits, the first respondent's registration of the trade marks was contrary to subsections 10(3),
10(7) and 10(12) of the Act and they should be expunged.
[6] The applicant seeks final relief on notice of motion. Where there are disputes of fact the principles set out in
PlasconEvans Paints Limited v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 634E635C are applicable.
As already mentioned the attitude of the parties to the disputes of fact is diametrically opposed.
[7] The parties filed three sets of affidavits. The first respondent filed its answering affidavit some four months
late, which the applicant condoned, and the applicant filed its replying affidavit late, which the first respondent