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of an application for registration provided the applicant used or has an intention to use the mark (section
20(1)), the date of application for registration determines the date of the vesting of the right. Prior or existing
use is only relevant in the event of competing claims of proprietorship. Mr Nathoo never had the intention to
use the mark and never used it. Coconut, likewise, had not used and had no intention of using the mark, at
least not at the time of Mr Nathoo's application. In other words, the substitution could not have had any
retrospective effect and Coconut could not have been in a better position or possessed of greater rights than
Mr Nathoo. This much was conceded during argument. Any other conclusion would make nonsense of the
registration system and the requirement of proprietorship. The question thus still remained whether Mr Nathoo
as first claimant to proprietorship had the intention to use the trade mark at the date of his application, a
question not affected by the substitution. In view of his concession that he did not have that intention, the
only issue raised by him, namely that his application was first in line and that the first filing date determined
the outcome of the case, became a nonissue.
[8]
The Full Court came to a different conclusion. It assumed that the Registrar had acted under section 20(9)
which provided that the Registrar may permit an applicant to amend his application upon such terms as the
Registrar may think fit. It proceeded to hold that this would include a substitution of the applicant because
substitution is a form of amendment; amendments are effective retrospectively; therefore, this change of
applicant operated retrospectively; and since Coconut was now the first applicant to file an application, its
application had to be accepted in preference to those of Levi Strauss. The underlying assumptions and the
reasoning are, in my view, flawed.
[9]
In order to read the right to substitute into section 20(9), the Full Court relied upon regulation 56 of the Trade
Marks Regulations 1971, without having regard to the principle that a statute may not be interpreted by
reference to subordinate legislation. By reading into section 20(9) a right to substitute different from those
explicitly mentioned in section 49(7) and 56(2), the Full Court overlooked the principle that general provisions
do not override specific provisions.
[10] Assuming that section 20(9) was nevertheless applicable, I turn to the statement that substitution is a form of
amendment, in reliance upon Herbstein & Van Winsen The Civil Practice of the Supreme Court of South
View Parallel Citation
Africa 4ed 418. That may be so in the context of pleadings in litigation (although vital distinctions remain
between a socalled substitution which is no more than the correction of a misnomer, and a true substitution of
parties: cf Du Toit v Highway Carriers and another 1999 (4) SA 564 (W) and compare Uniform Rule 15 with Rule
28). An application for the registration of a trade mark, however, is not a pleading but a formal act which
creates rights effective against the public.
[11] The further finding, namely that amendments of pleadings are retrospective, may as a matter of procedural law
be generally true, but that does not mean that it is true as a matter of substantive law. Amendments of
pleadings cannot create rights. They cannot, for instance, resuscitate a prescribed claim or defeat a statutory
limitation as to time (Dumasi v Commissioner, Venda Police 1990 (1) SA 1068 (V) at 1071CD). In this regard the
judgment in
Page 5 of [2001] 4 All SA 1 (A)
Associated Paint & Chemical Industries (Pty) Ltd t/a Albestra Paint and Lacquers v Smit 2000 (2) SA 789 (A) is
instructive. Company A issued a summons claiming payment. Later notice of intention to amend the name of
the plaintiff from company A to company B was given. Both A and B were registered companies. Prescription
had in the meantime run and the amendment was refused, an order confirmed on appeal. The ratio of the
judgment was this (paragraph 18 of the judgment):
"In the present case a summons was served on the defendant whereby the plaintiff [A] claimed payment of the
debt. It subsequently transpired that the plaintiff [A] was not the defendant's creditor . . . It is common cause
therefore that a debtorcreditor relationship between the defendant and the plaintiff [A] never existed.
Consequently the summons did not constitute a process whereby the creditor [B] claimed payment of the debt.
The running of prescription in respect of the debt was accordingly not interrupted by service of the summons on
the defendant."
If the proposed amendment could have had retrospective effect as a matter of substantive law, the conclusion
would have been different. By parity of reasoning, the substitution of Coconut did not transform the original
application into an application in which Coconut claimed proprietorship by virtue of an intention existing on 12
September 1988 to use the trade mark. An amendment cannot create jurisdictional facts (in this case an
intention to apply for registration and an intention to use) which do not otherwise exist. To summarise, even if
the substitution can be equated with the amendment of a pleading it did not, as a matter of substantive law,
retrospectively confer upon Coconut rights which Mr Nathoo did not possess.
[12] Having come to the conclusion that the Registrar was called upon to decide the competing claims to
proprietorship without regard to the substitution, it becomes unnecessary to decide whether the substitution
was void or voidable and whether the Registrar was competent to decide such issues. A further consequence
is that since Mr Nathoo's intention was the jurisdictional fact and because he did not have the required
intention at the relevant time, Levi Strauss is entitled to precedence. Counsel, however, raised two other
matters in this regard. He submitted