J, in disapproving a previous decision that doubted the feasibility of limiting a specification for nonuse of a
subset, expressed agreement with an example that decision posited, that a specification for "domestic
containers" would not be cut down to "red tea caddies". The question was whether the articles were
"commercially quite different", and the implication was that it would indeed be "commercially nonsense" to cut
down the specification for "domestic containers" to such a subset. Similar in import is the example Arjo's
counsel gave, of a specification for "wine" where use of the trade mark in relation to only red wine is proved.
Counsel for the respondent conceded, rightly, that it would not make commercial sense to cut down the
specification to red wine only. The concession must of course be qualified to the extent that it might be shown
that red wine (or
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any other specific type of "wine") is commercially so distinctive that limiting a specification to that product would
not constitute ''commercial nonsense''.
[19] These considerations illuminate the present case. Arjo was challenged in the founding papers to defend its
registered specification. It responded by alleging but failing to prove bona fide use of a wide range of articles
within the specification; and by proving use of its trade mark upon a subset of a category expressly protected
in the specification, namely paper. So confronted, I do not believe that Arjo was required to do more.
There is nothing to indicate that the subset at issue, namely carbonless copying paper, is commercially quite
different from other sorts of paper, nor is there anything to suggest that commercially it would be nonsensical
to maintain registration of the Idem mark, although used only on carbonless copying paper, for paper in
general. This approach is in my view supported by Kerly's Law of Trade Marks and Trade Names20 where the
first step in considering whether an overbroad specification should be revoked for nonuse is described thus:
"If the Court or Registry decides that there has been genuine use but only on a particular item or in relation to a
particular service, the first question is whether the specification extends unduly beyond the item or service? If so,
the inquiry
Page 157 of [2002] 2 All SA 147 (A)
is this: how would the notional reasonable man describe that item? Naturally, the answer depends on all the
circumstances, but the answer provides the wording appropriate for that item in the specification of goods."
This test, the authors suggest, should avoid what they call the "red tea caddy" problem. It will also, it seems to
me, avoid the "carbonless copying paper" problem, for without further information regarding trade practice or
industrial use, I venture to suggest that the notional reasonable person would describe that item as "paper".
[20] On the facts in this case, there is no conceptual, operational or functional basis for the further attenuation of
the proprietor's registration within the category in which the proprietor proved statutorily relevant use, namely
paper. This is not to decide that under section 27 of the Act the respondent bore an overall onus to convince
the court to exercise a discretion in its favour. This Court held that the comparable wording of the 1963 Act
conferred a general or residual discretion to refuse expungement, which was to be exercised only in
exceptional circumstances.21 Difficult questions may arise about the discretion the equivalent wording of
section 27(1) appears to confer. On the approach in this judgment those questions do not arise. Nor does the
question whether (as has been suggested)22 the extended protection afforded a trade mark proprietor by
the provisions of section 34(1)(b) in regard to unauthorised use of a mark on goods so similar to the
proprietor's as to create "the
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likelihood of deception or confusion", is relevant to the exercise of the discretion in section 27. Those questions
are not reached, since even accepting that an applicant for expungement is prima facie entitled to removal of
the mark from the register once nonuse of a category of goods is shown (as this Court decided under the
1963 statute)23 and that the Court's residual discretion would deny one so entitled a remedy only in
exceptional circumstances, the anterior question is: in regard to what expungible category of goods has non
use been shown? That question is primary, and it must be answered before the Court can determine the ambit
of the expungement the applicant seeks.
[21] Unless, therefore, it is evident to the Court (or the applicant lays a foundation suggesting) that the
expungement sought describes a commercially coherent category of goods within the existing specification, the
relief the applicant seeks cannot be granted if the proprietor has proved relevant use within the category. That
is the position in the present case, where, in sum, the proprietor proved relevant use of its trade mark within a
protected category and there is nothing to show that sustaining its registration in respect of that category
would not make commercial sense.
[22] This conclusion represents substantial success for Arjo, which is accordingly entitled to its costs on appeal. In
the court below, however, as indicated earlier, the matter was contested substantially on the bona fide use
issue, in regard to which the holding at first instance has been affirmed. I would therefore not change the
costs order in that court.
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[23] The following order is made: