consensually and the other by force of statute, each having its own peculiar functions, powers and authority.
For in such a case each tribunal will, by definition, be inquiring into and ruling upon different matters, and
neither will be capable of ruling authoritatively on the issue that falls within the competence of the other.
[18] In my view that is amply demonstrated in the present case. The Registrar of Trade Marks is called upon to
decide whether the trade marks qualify for registration in terms of sections 9 and 10 of the Act and if so upon
what conditions. The ASA, on the other hand, is called upon to decide whether Nestlé has copied the
advertising of Mars or any part thereof in the manner and with the consequences referred to in clause 9.1 of
the Code. The questions before them are quite different and no ruling made by the one will preclude a ruling by
the other. Furthermore, the parties to the respective proceedings are not the same. Although Mars is a party
to both proceedings the complaint to the ASA was made against Nestlé while the opposition to the trade marks
is to be brought by its Swiss principal. There is no prospect of a defence of res judicata in the proceedings
before the ASA once the Registrar had made his ruling (and vice versa) and by the same token a plea of lis alibi
pendens is thus bound to fail.
[19] It was argued on behalf of Nestlé that in the course of reaching his decision the Registrar will be required to
decide whether the trade marks
Page 320 of [2001] 4 All SA 315 (A)
are capable of distinguishing Mars' goods from the goods of others (as required by section 9(1) of the Act); and
whether Mars has a bona fide claim to proprietorship of the trade marks (as required by section 10(3)); and
whether the trade marks will be likely to cause deception or confusion (as contemplated by section 10(12)). All
those issues, it was submitted, will require the Registrar to decide whether Nestlé has acquired the right in this
country to what was referred to as the "advertising goodwill" in the characters, which is a matter that the ASA
will similarly be called upon to decide. I cannot see that the socalled "advertising goodwill" or reputation in the
characters concerned is relevant to the inquiries that the Registrar will be called upon to make, which relate to
the nature of the respective marks and the manner and extent of their use rather than to the reputation that
they might or might not have acquired. Furthermore,
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it is difficult to see what relevance the parties' respective rights to the "advertising goodwill" might have in
relation to the complaint that is before the ASA. The ASA is called upon to decide whether Nestlé has copied
the advertising material of Mars. The fact that Nestlé might subsequently have acquired "advertising goodwill"
in the material seems hardly relevant to that inquiry.
[20] However, in my view, we are not called upon in this appeal to decide whether or to what extent the respective
inquiries to be conducted by the Registrar and the ASA might correspond for in my view the attempt to find
some correspondence between the two proceedings is in any event misconceived and tends to divert attention
from what is the true issue in this appeal.
[21] The Registrar of Trade Marks and the ASA are both obliged to perform their respective functions and neither is
entitled to abdicate in favour of the other even if some aspects of their respective inquiries might coincide.
There was some debate as to whether the ASA divested itself wholly of the complaint that had been placed
before it or whether it merely deferred its consideration of the complaint until the Registrar has reached his
conclusion. If it divested itself wholly of the complaint, which was the construction that was placed on its
conduct by Mars, then clearly it was not entitled to do so, but I am willing to accept for purposes of this
judgment that it did no more than to defer consideration of the complaint until such time as the Registrar has
made his ruling (which was the construction that Nestlé placed upon its letter).
[22] The ASA might well be entitled in an appropriate case to defer consideration of a complaint until the occurrence
of an event that might be relevant to its inquiry but the problem in the present case is not confined to the
deferment of the complaint. In the absence of a contrary explanation, the inference is irresistible that the ASA
has not merely deferred the matter but has done so to permit the Registrar to make a decision in its stead on
one or other issue which the ASA considers to be relevant to its inquiry (precisely what the issue might be, and
its relevance to the inquiry has been left unexplained). To that extent at least it has purported to divest itself,
even if only partly, of matters that it is obliged by the Code to consider and to rule upon itself. I agree with the
court a quo that the ASA was not entitled to do that. It was obliged to consider and to rule upon the complaint
that was before it and not to shift that responsibility to the Registrar either wholly or in part.
Page 321 of [2001] 4 All SA 315 (A)
[23] Finally, it was submitted that the proceedings in the court a quo were premature in that Mars ought to have
exhausted the remedies provided in the Code by placing the decision before the Appeal Committee in terms of
clause 2.7 which provides as follows:
"Any party who feels aggrieved by a ruling of the Advertising Standards Committee or Advertising Properties
Committee may appeal against such ruling to the Appeal Committee."
There is no suggestion that the decision that is now in issue was made by either of those committees and in
those circumstances it was not subject to appeal in terms of that clause. Moreover, I think that the reference
to
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