sheets and rolls of carbonless copying paper (as the name of its local distributor indeed suggests). The product
consists of high quality paper chemically treated on its underside so that writing on its face can be carried
through to a second sheet below. Arjo's deponents say that sales of this product occur "essentially" to the
printing industry. Printers then use Idem carbonless duplication paper to produce printed matter for their
customers. This use of the mark Arjo calls its "primary" use. But it also describes a "secondary" use address
books, plain paper notepads, carbonless duplication notepads, lightly adhesive stickers (such as lawyers often
use), desk note blocks, pens and pencils, on all of which the Idem mark is placed. These secondary products
are not sold. They are distributed to CPL's customers
View Parallel Citation
and potential customers
Page 151 of [2002] 2 All SA 147 (A)
(presumably also printers) for promotional purposes. Arjo admits that the annual quantum "has not been
extensive".
[3]
From these facts stem the disputants' conflicting contentions, which relate to two questions. Does Arjo's
"secondary" use of the Idem mark constitute "bona fide use" of the trade mark within the meaning of section
27 of the Act? If it does, there has been relevant use of the trade mark within the specification granted not
only on carbonless copying paper but also on at least paper in its general sense and on paper articles. From
this it would follow that the respondent was not entitled to the ambit of the relief it obtained in the court
below. Even if the answer is "No", the second question remains: to what extent, if any, is the respondent on
the evidence before us entitled to removal of Arjo's registration?
[4]
On the papers and in the court below Arjo's principal argument resisting expungement was that it had in fact
made "bona fide use" as contemplated in section 27 of the trade mark such as to entitle it to maintain its
registration in respect of all goods within the specification. It also asserted that it would not be just, and
contrary to practice in South Africa and most other countries, for the specification to be limited to the
"extremely narrow range of goods" the respondent claimed in its notice of motion. The parties' submissions in
the court below focused on the first question, regarding which Hartzenberg J held that bona fide use required
trade in the goods concerned. This finding was the focus of the parties' written argument on appeal. But when
the appeal was called Mr Puckrin for Arjo, indicated two adjustments to its position. Arjo abandoned its
specification in respect of "cardboard, cardboard articles and paper stationery", and sought to defend a
registration only in respect of "paper and paper articles". Second, Arjo's argument now concentrated its attack
on the confined ambit of registration Hartzenberg J granted in the court below, seeking to substitute the
(reduced) specification it had conceded.
Bona fide use in terms of section 27
[5]
Arjo's counsel, while not advancing further argument for the contention that its secondary use of the mark
constituted bona fide use for statutory purposes, did not abandon that position, which must therefore be
considered. Arjo's submission was that although the secondary products were not sold, their distribution for
promotional purposes constituted bona fide use in a commercial context of the mark in furtherance of Arjo's
business in South Africa. The purpose of applying the Idem mark to the secondary goods was to distinguish
them from other similar goods, and the mark served that purpose. Relevant use for statutory purposes
included use on goods subsidiary to those in which Arjo mainly dealt, and included use for the promotion of
goods. The respondent, by contrast, submitted that bona fide use had to be use in connection with the
particular goods in respect of which the trade mark is registered, for the purpose of furthering trade in those
goods, and not for any other purpose.
View Parallel Citation
[6]
The most authoritative treatment in our trade mark law of the concept of bona fide use is that by Trollip J in
Gulf Oil Corporation v Rembrandt Fabrikante en Handelaars (Edms) Bpk3 where "bona fide user" by a registered
Page 152 of [2002] 2 All SA 147 (A)
trade mark proprietor in resisting rectification of the register under section 136 of the Trade Marks Act 9 of
1916 ("the 1916 Act") was at issue. This Court confirmed the judgment of Trollip J4 but Steyn CJ expressly
withheld endorsement of the comprehensive exposition of the concept at first instance.5 Trollip J's treatment
was, however, resurrected and approved in McDonald's Corporation v Joburgers DriveInn Restaurant (Pty) Ltd
and another6 where EM Grosskopf JA, although dealing with the avowedly "somewhat different" context of
section 36 of the present Act,7 nevertheless considered Trollip J's reasoning to be "entirely applicable".8
[7]
The issue in Rembrandt (supra) was whether the registered proprietor of a trade mark had shown bona fide
use of its mark in relation to lubricating oils. It did not in the ordinary course of its business manufacture or
produce such oils and proved only comparatively negligible sales of the substance after becoming aware of a
competitor's application for registration of its mark for lubricating oils and an impending application for
rectification. Trollip J inferred that the trade mark proprietor had no intention of conducting trade in the product
"in a commercial sense" and that it did not sell or advertise the oils under its mark "with the object or intention
of protecting, facilitating or furthering any trade in those goods".9 Since use merely to protect a trade mark
from expungement "without the proprietor's having any intention of trading in the goods in respect of which it