trucks and bakkies. On the windscreen itself one finds an embedded marking with the appellant's name, a
statement that the glass is laminated and shatterproof, and serial numbers.
Page 1334 of [2007] 4 All SA 1331 (SCA)
There is also a stickon label which includes the mark "BM E 36". In quoting it undertakes to fit a "BMW E36"
windscreen and its invoices will describe the goods sold as "BMW E36 2 DR 9297 WS" (WS obviously meaning
windscreen).
[7] It follows that the appellant is using BMW's registered trade marks without authority in the course of trade in
relation to the goods in respect of which the mark is registered.5 But, says the appellant, it is using the trade
marks to inform the public that it is selling windscreens that fit BMW cars and not that the windscreens are
original BMW windscreens and that its use is, accordingly, not trade mark use. In other words, it is not
misleading the public and, in any event, speech that is not misleading is constitutionally protected speech.
[8] The object of trade mark law as reflected in section 34(1)(a) and (b) is to prevent commercial "speech" that is
misleading. Trade mark use that is not misleading (in the sense of suggesting provenance by the trade mark
View Parallel Citation
owner) is protected, not only constitutionally but in terms of ordinary trade mark principles. As Justice Holmes
said:6
"When the mark is used in a way that does not deceive the public, we see no sanctity in the word as to prevent its
being used to tell the truth."
[9] The European Court of Justice pointed out that the question whether advertising may create the impression
that there is a commercial connection between someone like the appellant and the trade mark owner is a
question of fact to be decided in the light of the circumstances of each case.7 Especially when dealing with
spare parts and alleged counterfeits, the issues are not always black and white. It all boils down to a
question of trade mark use because, as Webster & Page8 point out,
"a phrase such as 'XYZ Spare Parts' [where XYZ is the registered trade mark] would not be protected by the section
while 'Spare parts for XYZ goods' would clearly fall within the provisions of section 34(2)(c)."
[10] At best for the appellant, its use of the BMW mark is capable of two constructions: on the one hand it may be
interpreted as informing the public that it is supplying unauthorised windscreens that fit BMW cars or, on the
other hand, it may mean that it is supplying BMW windscreens. It may be that some customers will realise,
having regard to the price or the fact that the appellant does not advertise itself as an "authorised dealer",
that the goods are not genuine BMW parts. But that is not the test. If, on balance (as I find), a substantial
number of persons may be deceived by interpreting the actions of the appellants as representing that the
windscreens are genuine BMW parts, the argument that the use is not trade
Page 1335 of [2007] 4 All SA 1331 (SCA)
mark use must fail. This is not really an issue in the case because, as the High Court mentioned, the appellant
did not dispute BMW's allegations in the founding affidavit that its use "is likely to give the impression to a
substantial number of potential customers that the windscreens being offered for sale by the [appellant]
emanate from or are in some way connected with or associated with [BMW]" or that "the impression is
created that these are genuine BMW windscreens".
[11] The question of trade mark use under section 34(1)(a) is closely connected to the "exceptions" listed in
subsection (2), more particularly the one relied in paragraph (c) quoted earlier because the provisions of
subsection (2) are in a sense the mirror image of the trade mark use requirement of subsections (1)(a) and
(b). The next question is whether the appellant's use of the marks on spare parts amounted to bona fide and
reasonable use consistent with fair
View Parallel Citation
practice. Once again, whether the use by the appellant is bona fide, reasonable and consistent with fair
practice is a factual question9 on which the court below held against the appellant. On appeal we should
generally defer to the judgment of a lower court unless that court clearly erred. The appellant did not seek to
discharge that burden but simply reargued the matter as if the lower court had not spoken.
[12] On the question of bona fides the High Court (correctly in my judgment) relied on and applied a dictum of Du
Plessis J in an unreported case where the learned Judge said the following:10
"Use will not be bona fide, however, if the user does not unequivocally make it clear that his goods are not connected
in the course of trade with the proprietor of the trade mark. It follows that bona fide use in s 34(2)(c) means honest
use of a trade mark, without the intention to deceive anybody and while unequivocally making it clear that the goods
are not connected in the course of trade with the proprietor of the trade mark."
[13] The European Court of Justice in the Gillette case11 espoused a similar approach:
"In that regard [dealing with honest practices], account should be taken of the overall presentation of the product
marketed by the third party, particularly the circumstances in which the mark of which the third party is not the owner
is displayed in that presentation, the circumstances in which a distinction is made between that mark and the mark or
sign of the third party, and the effort made by that third party to ensure that consumers distinguish its products from
those of which it is not the trade mark owner." [Paragraph 46. Emphasis added.]