HARMS ADP:
[1] The appellant, Commercial Auto Glass (Pty) Ltd, applies for leave to appeal against a judgment of Prinsloo J in
the High Court, Pretoria, which held that the appellant infringes certain trade marks belonging to the
respondent, Bayerische Motoren Werke AG, also known as "BMW". Leave to appeal depends on the
appellant's prospects of success and it is accordingly necessary to consider the merits of the proposed
appeal.
View Parallel Citation
[2] This case was argued on behalf of the appellant as a matter of principle with profound constitutional
implications whereas, on analysis and shorn of all the unnecessary adornment, the issues are factual and fall
within a narrow compass. First the statutory setting: BMW's claim is based primarily on the provisions of
section 34(1)(a) of the Trade Marks Act 194 of 1993, which is in these terms:
"The rights acquired by registration of a trade mark shall be infringed by
(a)
the unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark
is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause
confusion."
The appellant relies mainly on the statutory "exception" contained in section 34(2)(c), namely:
"A registered trade mark is not infringed by
. . .
(c)
the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the
intended purpose of such goods, including spare parts and accessories, and such services;
. . .
provided further that the use contemplated in paragraph . . . (c) is consistent with fair practice."
[3] This means that BMW had to establish (a) its trade mark registrations; (b) unauthorised use in the course of
trade by the appellant of those trade marks; (c) of an identical mark; (d) in relation to the goods in respect of
which the mark is registered. Concerning (c), BMW could, on different facts, have relied on the use of a mark
so nearly resembling its registered trade mark "as to be likely to deceive or cause confusion" but that is not
its case. It relies on use of an identical mark and that by its very nature
Page 1333 of [2007] 4 All SA 1331 (SCA)
deceives and confuses.1 In addition, as this Court recently held in line with developments in Europe and the
United Kingdom, the defendant's use must have been "trade mark use", meaning that
"[t]here can only be primary trade mark infringement if it is established that consumers are likely to interpret the
mark, as it is used by the third party, as designating or tending to designate the undertaking from which the third
party's goods originate."2
"What is, accordingly, required is an interpretation of the mark through the eyes of the consumer as used by the
alleged infringer. If the use creates an impression of a material link between the product and the owner of the mark
there is infringement; otherwise there is not. The use of a mark for purely descriptive purposes will not create that
impression but it is also clear that this is not necessarily the definitive test."3
[4] BMW relied on three registration certificates4 relating to goods in class 12 (schedule 3) described as "vehicles
. . . [and] . . . parts of and
View Parallel Citation
accessories for all the aforegoing". The registrations are all for word marks, namely "BMW", "BM" and "3
Series". It should be noted that the appellant did not attack the validity of any of these marks and did not ask
for the rectification of the register. The registrations are, accordingly, deemed to be in order.
[5] The appellant is in the business of supplying and fitting accessories and spare parts for all types of vehicles
but the main part of its business (if regard is had to its name and the signage on its premises) is the supply of
windscreens for motor cars. It is apparently not a manufacturer. It is fair to conclude from the affidavits and
the argument that the appellant is not in the business of supplying "original equipment", ie, spare parts made
by or under the control or with the authorisation of the vehicle manufacturer. Instead, it supplies what is
sometimes referred to as "pirate" or "counterfeit" parts although these terms fit uncomfortably because
unauthorised parts may be legitimate because they may not infringe any rights of the original manufacturer.
[6] In the course of its business the appellant supplies and fits unauthorised windscreens for different BMW
models, something about which BMW cannot and does not complain. BMW's case concerns the manner in
which this business is conducted. The appellant advertises windscreens under its name, Commercial Auto
Glass, and it lists them with their prices in this fashion:
"BMW E30 3 Series 8392
R355
BMW E36 3 Series 9197
R460
BMW E46 3 Series 98
R490"
It likewise lists windscreens for some other motor car series such as Fiat, Ford and Honda and also for some