Stores (SA) (Pty) Ltd 1990 (1) SA 722 (A) 726H, forms the basis of the judgment in Ewing McDonald & Co Ltd v M & M
Products Co 1991 (1) SA 252 (A), especially at 256CG.
The practical difficulties caused to litigants are selfevident. It is common cause that the Legislature intended to
address the problem in the 1993 Act. Section 1 s.v. "court" defines "court" to mean the Transvaal Provincial Division,
"but in relation to any claim or counterclaim for removal, amendment or variation of, or other relief affecting any
entry in, the register arising from or forming part of proceedings instituted in any other division of the said Supreme
Court having jurisdiction in relation to the proceedings, ['court'] includes that division in respect of such claim or
counterclaim." I shall refer to this qualification as a proviso. The fact that the primary meaning of "court" is the
Transvaal Provincial Division, gives recognition to the ratio of Spier Estate, namely that the situs of a trade mark is at
the Registry. The references to the "court" in sections such as 14(2), 15, 16(5), 24, 26 to 28, 31 and 59 are
therefore obvious references to the Transvaal Provincial Division. In all
View Parallel Citation
these instances the Act provides an option to approach either the "court" or the registrar and all these provisions,
in general terms, are concerned with the register. There are, however, sections where, in spite of the definition, the
Transvaal Provincial Division is expressly mentioned as the court concerned, e.g. in the context of appeals (see
sections 41, 45, 48 and 53 to 58).
Counsel for the appellant relied upon section 34(3) and (4) read with the definition of "court" for the proposition
that only the Transvaal Provincial Division now has jurisdiction to hear infringement proceedings. These subsections
deal with relief for infringement and provide that, if a trade mark is infringed, "the court [my emphasis] may grant
the proprietor" relief such as an interdict and damages. Because "court" is defined as the Transvaal Provincial
Division, says counsel, only the Transvaal Provincial Division can grant the said relief. The argument, superficially
attractive, is without real merit. The meaning of "court" depends upon the context in which the term is used. In the
context of section 34(3) and (4) it must refer to any court having jurisdiction to hear infringement proceedings on
common law or other statutory law principles. If it were otherwise, the proviso to the definition would be
meaningless and incapable of application. Once it is accepted, as counsel for the appellant accepted, that the object
of the proviso was to avoid the impasse mentioned in Spier Estate, it is difficult to conclude that the object was not
achieved. The underlying assumption of the proviso is that proceedings have been instituted in a High Court other
than the Transvaal Provincial Division, that they relate to trade marks, and that that High Court has jurisdiction in
relation to the proceedings. In the context of the Act and the definition, such proceedings most certainly include
trade mark infringement proceedings: the relief sought in the counter proceedings must "arise from" or "form part
of " the first mentioned proceedings.
Additionally, the references to "court" in section 34 are neutral references. The section is concerned with
infringement and the rights of owners of trade marks. It is not concerned with jurisdiction. The same applies to
sections 52 and 68, the first dealing with consequential relief and the second with the appointment of guardians
and curators. It seems inconceivable that the Legislature would have set out, in so oblique a manner, to oust the
jurisdiction of all but one of the different High Courts and thereby, for no reason inconvenience the public by
requiring all litigants to litigate in the Transvaal Provincial Division, irrespective of where the delict is committed or
the parties reside. All this means that Roux J in my judgment was correct in rejecting the objection to jurisdiction
raised by the appellant.
Page 448 of [1997] 4 All SA 444 (A)
The order made by Roux J was in terms of paras 1 and 1.1 of the notice of motion and it interdicts and restrains the
appellants,
"their servants or agents from infringing the [Society's] rights in the Trade Mark Registration Nos. 89/8358 and 89/8658 PPS
in class 36 (hereinafter referred to [as] 'the trade marks') by:
View Parallel Citation
1.1
their unauthorized use in respect of services in the course of trade of an identical mark or of a mark so nearly
resembling the [Society's] registered trade marks as to be likely to deceive or cause confusion."
The first mark, "PPS", is a letter mark and represents an abbreviation of the core of the Society's name, namely
"Professional Provident Society". The second is a device mark consisting of concentric circles. In the centre appear
the letters PPS and between the outer rings the words "Protection Providence Beskerming Voorsorg". Annexure "A"
to this judgment is a representation of this mark. Both are service marks registered in class 36 in respect of financial
and insurance services.
The Society consists of members of all professional associations and of other professionals. It was founded fifty
or more years ago for the benefit of its members in order to render both life insurance and medical aid to them. It
now provides sickness and disability cover, a lump sum retirement benefit, group life insurance, hospitalisation
schemes and also a retirement annuity fund. The Society has 65 000 professional people enrolled as members and
only Sanlam agents and brokers who have a contract with Sanlam may market its products. No individual brokers
are employed.
The second appellant, Mr Jacobs, conducts the business of a shortterm insurance broker under the name PPI
Makelaars (the first appellant). Mr Jacobs initially adopted as a logo two concentric circles with the letters PPI in the
middle and the words "Professional Personal Insurance" between the circles. As a result of the complaints raised by
the Society, an oval logo was adopted (annexure "B").