Commercial Auto Glass (Pty) Ltd v Bayerische Motoren Werke Aktiengesellschaft
 4 All SA 1331 (SCA)
Supreme Court of Appeal
7 September 2007
LTC Harms ADP, TD Cloete, JA Heher, PC Combrinck and A Cachalia
2007 (6) SA 637 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
Intellectual property law Trade marks Infringement of Where advertisement using trade mark is misleading,
infringement was established.
The appellant supplied and fitted windscreens to motor vehicles, including those manufactured by the respondent.
In advertising its services, the appellant used the respondent's trade name to indicate that it supplied windows for
The respondent's claim was based primarily on the provisions of section 34(1)(a) of the Trade Marks Act 194 of
1993 which sets out how trade mark rights are infringed. The court a quo found that the appellant's use of the
respondent's name was unlawful, leading to the appellant's seeking leave to appeal.
Held To establish infringement of its trade mark, the respondent had to establish its trade mark registrations and
unauthorised use in the course of trade by the appellant of those trade marks of an identical mark in relation to the
goods in respect of which the mark is registered.
Countering the respondent's claim, the appellant contended that it was using the trade marks to inform the public
that it was selling windscreens that fit the respondent's cars ("BMWs") and not that the windscreens were original
BMW windscreens. Thus it was argued that its use was not trade mark use.
The object of trade mark law as reflected in section 34(1)(a) and (b) is to prevent misleading commercial speech.
The appellant could not get around the fact that its advertisement would result in some people believing its
windscreens to be authentic BMW ones.
Although the above conclusion meant that the appellant had no prospect of success on appeal, the court granted
leave to appeal as the order of the lower court contained two errors which would require amendment.
For Trade Marks see:
LAWSA First reissue (Vol 29, paras 1306)
Cases referred to in judgment
Aktiebolaget Volvo v Heritage (Leicester)  FSR 253
Bayerische Motoren Werke AG v Autostyle Retail (TPD case 5887/2005)
Bayerische Motoren Werke AG v BW Tech 2004 Burrell's IP 170
Page 1332 of  4 All SA 1331 (SCA)
Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Deenik Case
Berman Brothers (Pty) Ltd v Sodastream Ltd 1986 (3) SA 209 (A)
Gillette Company and Gillette Group Finland Oy, The v LALaboratories Ltd
Oy  FSR 37, Case C228/03 (ECJ)
Verimark (Pty) Ltd v BMW AG  JOL 19890 ( SCA 53 (RSA))
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