In the circumstances, the application succeeded.
Notes
For Trade Marks see LAWSA Reissue (Vol 29, paras 1 306)
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.)
Southern Africa
Bata Ltd v Face Fashions CC and another 2001 (1) SA 844 (SCA) F
457
McDonald's Corporation v Dax Prop CC and another; McDonald's
Corporation v Joburgers DriveInn Restaurant (Pty) Ltd and another;
McDonald's Corporation v Joburgers DriveInn Restaurant (Pty) Ltd and
Dax Prop CC [1996] 4 All SA 1 (1997 (1) SA) 1 (A)
458
Triomed (Pty) Ltd v Beecham Group plc and others [2001] 2 All SA 126
(2001 (2) SA 522) (T)
458
United States of America
South District of New York in Tommy Hilfiger Licensing, Inc v Nature Labs,
LLC No 99 CIV.10713 (MBM)
462
Page 456 of [2003] 2 All SA 454 (C)
Judgment
CLEAVER J:
[1] This is an application which is based on the provisions of section 34(1)(c) of the Trade Marks Act 194 of 1993
("the Act").
[2] The applicant is the registered proprietor of the following South African trade marks in class 32:
2.1
No. 79/3675 CARLING BLACK LABEL in class 32 in respect of alcoholic brewery beverages, including beer,
ale, lager, porter and stout; shandy; nonalcoholic drinks; preparations for making all such drinks, dated
19 July 1979; and
2.2
No. 91/9236 CARLING BLACK LABEL neck and body label (colour) in class 32 in respect of beer, ale and
porter, dated 1 November 1991; and
2.3
No. 91/9237 CARLING BLACK LABEL neck and body label (1991) in class 32 in respect of beer, ale and
porter, dated 1 November 1991;
The applicant is a company registered in Rotterdam, The Netherlands, and trades in and controls the trade in
a large range of products, largely alcoholic and nonalcoholic beverages. It also functions as a trade mark
holding company which manages, maintains and controls the use of a range of trade marks throughout the
world. It acquired ownership of the trade marks in issue and the marks were assigned to it with effect from
31 December 1997. After the institution of these proceedings the applicant changed its name to SAB Miller
Finance BV. The respondent is a close corporation and offers for sale Tshirts bearing marks which are similar
to a number of wellknown trade marks, including those of the applicant. It does so through advertising on
the internet.
[3] A copy of the applicant's mark, is attached hereto marked "A", while a copy of the mark used on the
respondent's Tshirts is attached marked "B". From the two marks it will be seen that
·
The words "BLACK LABEL" have been replaced in the respondent's mark by the words "BLACK LABOUR".
The lettering of the script is the same. The words "CARLING" and "BEER" above and below the
applicant's mark have been replaced by the words "WHITE" and "GUILT" respectively.
·
The words in the applicant's mark, at the top of the mark, namely "AMERICA'S LUSTY, LIVELY BEER" have
been replaced in the respondent's mark by the words "AFRICA'S LUSTY, LIVELY EXPLOITATION SINCE
1652".
·
The words "BREWED IN SOUTH AFRICA" at the foot of the applicant's mark have been replaced by "NO
REGARD GIVEN WORLDWIDE" on the applicant's mark.
The lettering containing these words in both marks is similar and in each case is in black on a yellow
background.
[4] The applicant contends that the respondent's mark infringes the provisions of section 34(1)(c) of the Act and
accordingly applies for an interdict
Page 457 of [2003] 2 All SA 454 (C)
restraining the respondents from using the offending mark. The section reads as follows: