was registered" did not constitute bona fide use for statutory purposes, rectification was granted.10 O n
appeal this Court confirmed the finding regarding absence of intent to trade under the mark "as a commercial
enterprise", and affirmed that use "for an ulterior purpose, unassociated with a genuine intention of pursuing
the object for which the Act allows the registration of a trade mark and protects its use, cannot pass as bona
fide user".11
[8]
The present matter differs from Rembrandt (supra) in several respects. First, there is no evidence (and the
respondent does not suggest) that Arjo
View Parallel Citation
started distributing the promotional materials to thwart an impending expungement application. Second, I think
the assertion by Arjo's deponents that the distribution of the secondary products, albeit not extensive, was
"on a commercial scale", must be accepted. Although Arjo gives no indication of its business turnover or the
number of its customers (making it difficult to gauge precisely the import or impact of promotional distribution),
the evidence indicates that some 4 000 promotional items were distributed annually. On any scale this cannot
be discounted; it certainly
Page 153 of [2002] 2 All SA 147 (A)
dwarfs the proprietor's puny output in Rembrandt (supra). More important, lastly, Arjo's distribution of these
products was in a more specific sense also "commercial", in that it was conducted with a view to promoting
knowledge, recognition and acceptance of the Idem mark and more especially that mark in relation to Arjo's
primary commercial product, namely carbonless copying paper. It seems to me therefore that use of the mark
on the secondary products promoted or was intended to promote trade in the primary product (though it would
not seem that the use in question was for statutory purposes "in relation to" the traded goods).12
[9]
Despite these differences, both the rationale of Rembrandt (supra) and its outcome seem to me to indicate that
the use of the trade mark on the promotional products did not constitute bona fide use as contemplated by the
statute. The basis of the decision in Rembrandt (supra) was that to constitute bona fide use the proprietor had
to use the trade mark upon goods with the object or intention of protecting, facilitating or furthering trade in
those goods. It is true that there the inquiry into bona fides concerned the proprietor's authenticity of purpose
in orchestrating a tiny handful of sales with the objective of protecting its mark from expungement on the
ground of nonuse. Here the proprietor had no such objective, but only the commercially authentic aim of
promoting sales of its traded goods. But the core of Trollip J's reasoning, as approved by this Court, was not
that bona fide use is negatived by the ulterior purpose of thwarting a competitor's registration (a conclusion
incompatible with Electrolux Ltd v Electrix Ltd and another,13 upon which both Trollip J and Steyn CJ relied), but
that, whatever the proprietor's actual motive, inauthenticity of statutory purpose is established by absence of
commercial trade in the article on which the mark is used.
View Parallel Citation
[10] It is in this context that Trollip J's formulation of the general purpose of the statutory system of trade mark
protection, expressly adopted in McDonald's case (supra) , must be understood:
"Now the system of registering trade marks is designed to protect, facilitate and further the trading in the
particular goods in respect of which the trade mark is registered. The very name, 'trade mark', connotes that, and
the definition thereof in sec. 96 of the Act confirms it. I would therefore say that 'bona fide user' in section 136
means a user by the proprietor of his registered trade mark in connection with the particular goods in respect of
which it is registered with the object or intention primarily of protecting, facilitating, and furthering his trading in
such goods, and not for some other, ulterior object."14
Page 154 of [2002] 2 All SA 147 (A)
[11] Though Trollip J attached some significance to the word "user" in contrast to "use" in the 1916 Act,15 both the
Trade Marks Act 62 of 1963 ("the 1963 Act") and the present Act refer simply to "bona fide use", and I
conclude, as in the McDonald's case (supra), that the reasoning of Trollip J is entirely applicable. Since absence
of intention to trade commercially in the particular goods in respect of which the trade mark is registered
renders use of the mark statutorily inauthentic, it must follow that use of a trade mark on goods other than
with the object of promoting trade in those goods cannot constitute bona fide use for statutory purposes, even
if that use promotes trade in other goods. Although Arjo's use of the trade mark on the promotional goods was
"commercial" in that it promoted goods in which it did trade, it was not commercial use in relation to the goods
on which it was displayed, since those goods were not being traded. And while the use of the trade mark on
those goods was use in order to distinguish them from others' similar goods, that use was not for the purpose
of trading in those goods, but in other goods within the specification. As it has been expressed elsewhere,
regarding all items within the specification other than carbonless copying paper, Arjo proved no "course of
trading embarked on as an end in itself".16
[12] This conclusion accords with the decision in Kodiak Trade Mark,17 upon which counsel for the respondent relied.
There, as in Rembrandt (supra), there was no evidence of "true trading" in the goods bearing the trade mark,
and though the goods had (as in the present case) an intrinsic function, they were a promotional vehicle for
the trade mark proprietor's main trade in other goods. It was held that no bona fide use under the United
Kingdom Trade Marks Act of 1938 had been established and expungement in respect of the goods in question
was granted.