Removal from the register
[13] The question now is the practical implications for the ambit of Arjo's registration, and hence for the outcome of
the appeal, of the conclusion that Arjo made bona fide use of its trade mark in relation only
View Parallel Citation
to carbonless copying paper. The matter seems to have been conducted in the court below on the basis that if
Arjo failed to establish bona fide use in relation to goods other than carbonless copying paper it followed that
its registration should be restricted to the traded goods. However, Arjo's affidavits clearly signalled a separate
challenge to the narrow ambit of the specification the respondent sought in its notice of motion, and its counsel
was entitled to press this issue on appeal.
[14] As indicated earlier, at the hearing counsel for Arjo abandoned portion of its registration and sought to defend
a specification embracing only "paper and paper articles". Counsel for the respondent, on the other hand,
maintained that paper was not a homogeneous concept and that a registration for "paper and paper articles"
was too wide and nebulous. She therefore urged that Arjo's registration be cut down further. But she had
difficulty
Page 155 of [2002] 2 All SA 147 (A)
not only in defining precisely the ambit of the registration she supported, but in articulating the principle that
underlay it. She emphasised that Arjo's traded product is supplied "essentially" to the printing industry. This
led to the suggestion that Arjo's registration should be confined to "carbonless paper and paper used in the
printing industry". The manifest imprecision in this definition was not the end of counsel's difficulties, for she
conceded that carbon paper was so similar in its practical applications to carbonless copying paper that use of
the trade mark upon it would lie untenably close to Arjo's entitlement. She therefore conceded that the
registration should embrace also carbon paper.
[15] This concession has obvious significance, since it entails that Arjo is entitled to protection within the category
"paper" stretching beyond the ambit of its proved trading use of the mark. The concession was properly made,
but once made, it opened a host of further intractable problems of definition and delimitation. And counsel's
difficulties were in due course compounded when in written argument submitted after the hearing she
expanded the conceded ambit of the specification even further. She now suggested that the registration
should comprise "paper and paper articles, including carbonless copy paper, copy paper and carbon paper, but
otherwise excluding paper stationery". Apart from itself being open to the charge of nebulousness, this
formulation adds "copy paper" to the suggested specification. This, like carbon paper, lies beyond Arjo's proven
trade, and similarly entails a larger entitlement than Arjo obtained in the court below.
[16] The enumeration of these complexities implies no criticism of counsel's contribution to what was an illuminating
debate. They arise from the subjectmatter of the appeal itself. At source the difficulties spring from the
incontestable fact that Arjo proved statutorily relevant use of its trade mark on "paper" admittedly a subset
of paper, but paper nonetheless, since in the description of the traded goods "carbonless" and "copying" are
merely attributes qualifying a commodity, and that commodity is expressly protected by the registration sought
to be expunged. It is therefore not surprising that an attempt to draw lines within the commodity occasions
both conceptual and operational difficulties. If
View Parallel Citation
"paper" is a nebulous concept, to whom is it so? Again, what is "the printing industry", and what sorts of paper
are distributed within it? If a distinction is to be drawn between carbonless copying paper and other sorts of
paper, or between paper supplied to the printing industry and paper not so supplied, why not between
punched paper and unpunched paper; between lined and unlined paper; between white and coloured paper;
or indeed between red and nonred paper?
[17] In Minerva Trade Mark,18 Jacob J observed that wide words in trade mark specifications can cover "what are
commercially quite different sorts of articles". In that case, the specification included "printed matter", which he
held as a pure matter of language could cover anything on which there is printing. The applicant for
expungement was a publisher of literary titles. The specification was held not to apply to printed matter of a
literary character, and was consequently revoked in so far as it was registered for
Page 156 of [2002] 2 All SA 147 (A)
printed matter other than stationery. The question Jacob J asked was whether there had been nonuse "in
respect of a significant subset of a wide general description", and one of the criteria he applied was whether
"it would be commercially nonsense to maintain the registration for all goods [covered] by the wide words". To
similar effect is Mercury Communications Ltd v Mercury Interactive (UK) Ltd,19 where Laddie J postulated that a
specification should be cut down where it covers goods which are "quite unrelated" to a proprietor's "real
trading interests".
[18] The Minerva decision (supra) is particularly instructive, since the difference between printed stationery (in which
the trade mark proprietor dealt) and literary texts (in which the objector traded) is surely so evident as to
invoke no contention. What is more, the attenuation of the specification (to exclude literary texts) was not only
evident but precise in its nature and ambit. The conceptual, operational and functional differences between the
category protected for the proprietor's use and that excluded from it were manifest. It is significant that Jacob