Nestlé (SA) (Pty) Ltd v Mars Incorporated
[2001] 4 All SA 315 (A)
Division:
Supreme Court of Appeal
Date:
31 May 2001
Case No:
333/99
Before:
Nienaber, Harms, Mthiyane JJA, Nugent and Chetty AJJA
Sourced by:
PR Cronje
Summarised by:
D.Harris
Parallel Citation:
2001 (4) SA 542 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
[1] Advertising Dispute regarding trade marks Referral of complaint to Advertising Standards Authority Advertising
Standards Authority having contractual obligation to consider complaints referred to it in terms of the Code of Advertising
Practice.
[2] Trade marks Dispute regarding marks Referral of complaint to Advertising Standards Authority Advertising
Standards Authority having contractual obligation to consider complaints referred to it in terms of the Code of Advertising
Practice.
Editor's Summary
The parties cited in the present matter were involved in a dispute about the use of a certain trade mark. Both
parties were manufacturers of confectionery. The Respondent had used a certain brand character as its trade mark
overseas for many years. In 1993, it introduced its product to South Africa. At the same time, the Appellant devised
a similar concept for the advertising and marketing of its own product. Alleging that the Appellant had copied its
brand character, the Respondent referred a complaint to the Advertising Standards Authority of South Africa
(hereafter referred to as ASA). The latter responded by declining to deal with the complaint on the basis that it was
a matter involving trade mark law, and therefore fell within the primary jurisdiction of the civil courts. This caused
the Respondent to apply to the courts for an order compelling the ASA to reconsider its stance, and to rule upon the
complaint. The Respondent's application was successful, leading to the present appeal.
Held The ASA was established within the advertising industry, for the purpose of creating a system of self
regulation within the industry. A Code of Advertising Practice and Procedural Guide was developed, and members
were obliged to adhere thereto.
Before addressing the merits, the Court briefly considered a preliminary point raised by the Appellant. It was
argued with regard to the Respondent's application in the lower court that the evidence failed to establish that it
had been authorised by the Respondent. The Court pointed out that at the time of the hearing, it was clear that the
Respondent had at least ratified the commencement of proceedings. The procedural point was thus dismissed.
The Court then turned to consider the actual appeal. The Code referred to above bound both the ASA and its
members to its terms. Therefore, it was a contractual obligation of the ASA to consider and rule upon complaints
made to it in accordance with the Code's procedures.
According to the Appellant, the present case was of such a nature that the defence of lis alibi pendens could apply
to it. In this regard it was argued that the ASA was not obliged to consider the complaint because the subject
matter had been referred to another forum for adjudication. This was a reference to the
Page 316 of [2001] 4 All SA 315 (A)
Respondent's application to the Registrar of Trade Marks for registration of its brand character, and the opposition
thereof by the Applicant.
The defence of lis alibi pendens has as its underlying principle the aim of finality in litigation. However, it applies
only where the same dispute between the same parties is sought to be placed before the same tribunal. None of
those elements were present in the case at hand. Not only were the matters placed before two different tribunals
(the ASA and the Registrar of Trade Marks), but the causes of action were different in each case.
The appeal was accordingly dismissed with costs.
Notes
For Trade Marks see LAWSA (Vol 29, paras 1 266)
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.)
Marlin v Durban Turf Club and others 1942 AD 112