[14] The question that arises is why the appellant insists on conducting its business in the manner described. Why
can it not, through the use of a few words, convey the true facts to the public? The answer does not appear
from the papers and none was suggested during argument save for relying on the appellant's "right" to act in
the manner it does. From this one can only deduce that the appellant wishes to obtain an unfair advan
Page 1336 of [2007] 4 All SA 1331 (SCA)
tage from the use of the trade marks and does not wish to inform the public of the true facts concerning the
origin of the windscreens. In other words, the argument that the advertisements "consist wholly of
descriptive, truthful commercial speech" is without factual foundation. On that finding the use cannot be bona
fide or consistent with fair trade practice and it follows that the High Court's finding that the appellant is
infringing BMW's trade marks under section 34(1)(a) was correct.
[15] From the narrative above it appears that the appellant also uses the designations E30, E36 and E46. These
are not registered trade marks but BMW relied on section 35 of the Act which deals with the protection of an
View Parallel Citation
unregistered trade mark which may be entitled to protection under Article 6 bis of the Paris Convention as a
wellknown trade mark (ie, well known in the Republic as being the mark of person who is a national of a
convention country). Section 35(3) provides that:
"The proprietor of a trade mark which is entitled to protection under the Paris Convention as a wellknown trade mark
is entitled to restrain the use in the Republic of a trade mark which constitutes, or the essential part of which
constitutes, a reproduction, imitation or translation of the wellknown trade mark in relation to goods or services
which are identical or similar to the goods or services in respect of which the trade mark is well known and where the
use is likely to cause deception or confusion."
[16] It is not necessary to traverse all the aspects of this provision because of the finding of the High Court that
BMW has established its entitlement to protection and because the appellant has restricted its argument to
one aspect only, namely that these marks cannot be trade marks. They are, according to the submission,
merely descriptive of certain models of BMW cars and purely descriptive marks cannot be trade marks because
they cannot serve to distinguish in the trade mark sense by serving as a badge of origin. I disagree that
these marks are purely descriptive. They perform in my view two functions: to distinguish one BMW model
from the other and to serve as a badge of origin. To use a classic example, the mark "E Type" not only
described a specific model Jaguar car but also identified the car as being of a particular provenance. It follows
that the appellant has also in this regard no prospects of success on appeal.
[17] It is, however, necessary to grant leave to appeal because of the form of the order issued. In the first
instance, it contains two obvious errors, namely it granted an order also under section 34(1)(b) it is not
possible to infringe under paragraph (a) and (b) at the same time and there was no finding in the judgment of
such an infringement and it granted an order based on passingoff, something that was not in issue during
the hearing in the court below. These errors occurred because an order was issued in terms of the notice of
motion without reformulation considering the terms of the judgment itself. These errors could have been
rectified by the court below under Uniform rule 42 and do not justify a costs order in favour of the appellant
on appeal.
[18] In addition, during the course of argument this Court raised the question whether the orders granted were
capable of misinterpretation and misapplication. This issue was not raised by the appellant and, accordingly,
does not justify a costs order in its favour. For the sake of good order leave to
Page 1337 of [2007] 4 All SA 1331 (SCA)
appeal consequently has to be granted, the appeal has to succeed in the limited respects mentioned, and a
new order will issue.
[19] The following order is made:
1.
Leave to appeal is granted.
2.
The appeal is upheld to the extent that the following order is substituted for the order of the court
below:
"(a)
The respondent is restrained in terms of section 34(1)(a) of
View Parallel Citation
the Trade Marks Act, 1993, from infringing the rights of the applicant in any of its trade mark
registrations 1979/06501, 1998/17028 and 1984/01620 in relation to windscreens and windows for motor
vehicles.
3.
(b)
The respondent is restrained in terms of section 35 of the Trade Marks Act, 1993, from infringing the
rights of the applicant in any of its unregistered wellknown trade marks E30, E36 and E46 in relation to
windscreens and windows for motor vehicles.
(c)
The respondent is to pay the costs, including the costs of two counsel."
The appellant is to pay the costs, including the costs of two counsel in relation to both the application
for leave to appeal and the appeal.