Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and another
[2000] 2 All SA 1 (A)
Division:
Supreme Court of Appeal
Date:
16 March 2000
Case No:
573/97
Before:
Vivier,Harms,Marais,Streicher JJA and Farlam AJA
Sourced by:
S Temkin
Summarised by:
C Hartley
Parallel Citation:
2000 (2) SA 771 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
[1] Trade Marks Application to rectify trade mark register by having disclaimer entered against trade mark.
[2] Trade Marks Trade Marks Act 194 of 1993 Section 15 Where trade mark contains matter which is not capable of
distinguishing court may require that proprietor disclaim any right to the exclusive use of such matter.
Editor's summary
This appeal relates to an application by the Appellant to rectify the trades marks register by having a disclaimer
entered against a trade mark registered in the name of the Respondent to the effect that the registration of the
trade mark did not give a right to the Respondent to the exclusive use of the name, "Liquorice Allsorts".
The Respondent relied upon section 15 of the Trade Marks Act 194 of 1993 which provides that if a trade mark
contains matter which is not capable of distinguishing within the meaning of section 9, a court may require that the
proprietor disclaim any right to the exclusive use of such matter.
The Court considered whether the term Liquorice Allsorts is capable of distinguishing the liquorice confectionery
of Beacon from the same product of any other person, ie whether Liquorice Allsorts is the name of the product or
whether it is the name of Beacon's product.
Held Beacon is not entitled to the exclusive use of the name Liquorice Allsorts because it is used by Beacon and
others in the trade to describe the product and not to distinguish Beacon's products from that of others. The Court
considered whether it had a discretion to require a disclaimer and held that this was an appropriate case for the
entry of a disclaimer. The Court held that the applicable trade mark was to be rectified by the insertion of a
disclaimer to the effect that the Respondent had no right to the exclusive use of the name Liquorice Allsorts.
Notes
For Trade Marks see LAWSA (Vol 29, paras 1266)
Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed. H N refers to
corresponding headnote number.)
South Africa
Distillers Corporation (SA) Ltd v Stellenbosch Farmers Winery Ltd 1979 (1) SA 532 (T)
Estee Lauder Cosmetics Ltd v Registrar of Trade Marks 1993 (3) SA 43 (T)
Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A)
Media Workers Association of SA v Press Corporation of SA Ltd 1992 (4) SA 791 (A)
Page 2 of [2000] 2 All SA 1 (A)
United Kingdom
Antec International Ltd v South Western Chicks (Warren) Ltd [1997] FSR 278
Philip Morris Inc's Trade Mark Application [1980] RPC 527
Wagamama Ltd v City Centre Restaurants Plc and another [1995] FSR 713 (Ch D)
View Parallel Citation
Judgment
HARMS JA
[1] This appeal relates to an application by the appellant ("Cadbury") to rectify the trade marks register by having
a disclaimer entered against a trade mark registered in the name of the respondent ("Beacon"). The court a quo