Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed.)
Ewing McDonald & Co Ltd v M & M Products Co 1991 (1) SA 252 (A)
PlasconEvans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) F
Softex Mattress (Pty) Ltd v Transvaal Mattress and Furnishing Co Ltd 1979 (1) SA 755 (D)
Spier Estate v Die Bergkelder Bpk and another 1988 (1) SA 94 (C) R
Sportshoe (Pty) Ltd v Pep Stores (SA) (Pty) Ltd 1990 (1) SA 722 (A)
Thomas v BMW South Africa (Pty) Ltd 1996 (2) SA 106 (C)
United States
Broderick & Bascom Rope Co v Manoff [1930] 41 F (2d) 353 F
Page 446 of [1997] 4 All SA 444 (A)
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Judgment
HARMS JA
Pursuant to an application in the Witwatersrand Local Division, an interdict was granted by Roux J restraining the
appellants from infringing two registered trade marks of the present respondent ("the Society"). The interdict was
based upon the infringing act defined in section 34(1)(a) of the Trade Marks Act 194 of 1993. Leave to appeal was
granted by the court below.
Apart from the attack on the factual finding that the appellants' mark so closely resembles those of the Society
as to be likely to cause confusion or deception, the appellants attack the jurisdiction of the court below. The
submission is that only the Transvaal Provincial Division of the erstwhile Supreme Court of South Africa may hear
proceedings concerning the infringement of trade marks. Put in presentday context, infringement jurisdiction is
limited to the High Court having its seat in Pretoria. Roux J, having considered the history and the terms of the Act,
rejected the submission and summarised the position as follows:
1.
Any provincial or local division of the Supreme Court of South Africa has jurisdiction to hear an infringement action
subject to one or more of the traditional grounds of jurisdiction being present.
2.
In those matters mentioned in sections 53 a n d 57 of the Act, the Transvaal Provincial Division has exclusive
jurisdiction notwithstanding an infringement action in some other division.
3.
In those matters mentioned in sections 16(5), 24, 26 a n d 27, if they are independent applications, the Transvaal
Provincial Division has exclusive jurisdiction.
View Parallel Citation
4.
If the matters mentioned in paragraph 3 above arise in infringement proceedings, the court having jurisdiction to hear
the infringement action has concurrent jurisdiction with the Transvaal Provincial Division.
The parties to the litigation are incolae of the Witwatersrand Local Division. The alleged statutory delict was and is
being committed within its area of jurisdiction. That being the position, and in the absence of any complicating
statutory provision, the Witwatersrand Local Division had jurisdiction not only in terms of section 19(1)(a) of the
Supreme Court Act 59 of 1959 but also in terms of the common law (cf. Softex Mattress (Pty) Ltd v Transvaal Mattress
and Furnishing Co Ltd 1979 (1) SA 755 (D); Thomas v BMW South Africa (Pty) Ltd 1996 (2) SA 106 (C) 116AF). The
Patents, Designs, Trade Marks and Copyright Act 9 of 1916 did not impinge upon the common law in this respect
(see section 193 s.v. "the court"). The same applied to the Trade Marks Act 62 of 1963. As pointed out by Webster
and Page, South African Law of Trade Marks (3rd ed) pp 377378, jurisdiction in relation to infringement proceedings
was determined by the application to the facts of each case of the general rules relating to jurisdiction. It was said
in Spier Estate v Die Bergkelder Bpk and another 1988 (1) SA 94 (C) 101FG, that the Legislature was not concerned
to introduce in the 1963 Act any departure from the principles governing jurisdiction as found either at common law
or in any other statute.
Spier Estate, however, identified a complication which arises from the fact that it is permissible, in response to
infringement proceedings, to attack the validity of the trade mark and to dispute the correctness of the register
concerning that mark. That can be done by way of a counter action or application or by separate proceedings, to
take an example, for the rectification of the register. Such proceedings involve the Registrar of Trade Marks and the
register. On the assumption that these constitute proceedings in rem and that the situs of the right is where the
Page 447 of [1997] 4 All SA 444 (A)
Registry is located, Spier Estate held that the only court competent to deal with them was the Transvaal Provincial
Division (at 98FG). The reasoning in Spier Estate, although only assumed to be correct in Sportshoe (Pty) Ltd v Pep