Arjo Wiggins Ltd v Idem (Pty) Ltd and another
 2 All SA 147 (A)
Supreme Court of Appeal
28 September 2001
Nienaber, Harms, Cameron, Navsa JJA and Froneman AJA
2002 (1) SA 591 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
 Intellectual property Patents Trade marks Expungement application Whether expungement described a
commercially coherent category of goods within the existing specification Trade mark proprietor proved relevant use of
the mark within a subsection of a category Application refused.
 Intellectual property Trade marks Section 27 Trade Marks Act 194 of 1993 Use of the trade mark for
promotional purposes Whether this constituted bona fide use of the mark Held that promotional use of the trade mark
on goods which were not the object of trade, did not constitute bona fide use.
The Appellant, a United Kingdom company, was the proprietor of a registered trade mark, "Idem", in respect of
carbonless copying paper. This was referred to as the primary use of the mark. As a secondary use, the Appellant
used the mark on products that were not sold, but used for promotional purposes, like address books and
notepads. The Respondent held the same registered trade mark in respect of stamps, photographs, writing and
drawing instruments. In 1997, the Appellant issued summons against the Respondent claiming an interdict and
royalties for infringement of section 34 of the Trade Marks Act 194 of 1993 ("the Act"). Arguing that the Appellant's
use of the trade mark did not constitute bona fide use of the mark; the Respondent launched its own application for
the expungement thereof in terms of section 27 of the Act. The court a quo granted the Respondent's application,
and the Appellant now appeals against the expungement order.
Held The issue faced by the Court was whether the Appellant's secondary use of the "Idem" mark constituted
"bona fide use" of the trade mark as envisaged by section 27 of the Act. Further, if the answer to this issue was in
the negative, then the Court had to decide to what extent, if any, was the Respondent entitled to remove the
Appellant's registration of the trade mark. The Appellant argued that it had in fact made "bona fide use" of the trade
mark as outlined in section 27 of the Act, so as to entitle it to maintain its registration thereof.
Bona fide use in terms of Section 27
The Appellant submitted that although the secondary products were not sold, their distribution for promotional
purposes constituted bona fide use in the commercial context and furthered their business interests in the country.
The purpose of applying the Idem mark was to distinguish them from other similar products. The Respondent
countered this argument by submitting that bona fide use had to be use in connection with the particular goods in
respect of which the trade mark is registered, with the purpose of furthering those specific goods
Page 148 of  2 All SA 147 (A)
and not any other goods. The Court considered the Appellant's argument that distribution was effected with the
purpose of promoting knowledge and recognition of the "Idem" trade mark. The use of this mark on the secondary
products in effect promoted trade in the primary product, namely carbonless copying paper.
The Court maintained that "bona fide use" as contemplated by the Act meant that the proprietor had to use the
trade mark on goods with the purpose of protecting or furthering trade in that specific type of goods, and not use of
the mark for some ulterior object. Therefore, although the Appellant's use of the trade mark on the promotional
goods was "commercial", in that it promoted goods that it did trade, it was not commercial use of the goods
displayed, since those goods were not being traded. Further, the use of the trade mark as used by the Appellant
was to differentiate its goods from other similar goods, and not for the purpose of trading in these goods. The
Court held that there was no evidence of "true trading" in the goods bearing the trade mark, and the Appellant had
failed to prove bona fide use. The expungement was granted.
Removal from the register
The Appellant decided to abandon a portion of its registration and to defend a specification relating to "paper and
paper articles." The Respondents argued that registration of "paper and paper articles" was too wide and
nebulous, to be enforced, and conceded that the registration should relate to only carbon paper. This led to a
number of difficulties in interpretation and definition. The Court observed that wide words in trade mark
specifications can cover a range of different types of articles.
The Court further found that the Act conferred upon it a discretion to refuse expungement, such discretion to be