("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed.)
South Africa
AdcockIngram Laboratories Ltd v SA Druggists Ltd and another 1983 (2) SA 350 (T)
Bader and another v Weston and another 1967 (1) SA 134 (C)
Berman Brothers (Pty) Ltd v Sodastream Ltd and another 1986 (3) SA 209 (A)
Danco Clothing (Pty) Ltd v NuCare Marketing Sales and Promotions (Pty) Ltd and another 1991 (4) SA 850 (A)
Francis George Hill Family Trust v South African Reserve Bank and others 1992 (3) SA 91 (A)
Hart v Pinetown Drivein Cinema (Pty) Ltd 1972 (1) SA 464 (D)
Hubby's Investments (Pty) Ltd v Lifetime Properties (Pty) Ltd 1998 (1) SA 295 (W)
Jeeva and another v Tuck NO and others 1998 (1) SA 785 (SE)
Mars Incorporated v Candy World (Pty) Ltd 1991 (1) SA 567 (A)
Pearson v Magrep Investments (Pty) Ltd and others 1975 (1) SA 186 (D)
Ritz Hotel Ltd v Charles of the Ritz Ltd and another 1988 (3) SA 290 (A)
Sodastream Ltd and another v Berman Brothers (Pty) Ltd 1984 (4) SA 425 (T)
Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A)
United Kingdom
Consort Trade Mark [1980] RPC 160 (HL)
Holly Hobbie Trade Mark [1984] RPC 329 (HL)
Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company 120 CLR 136
Page 3 of [1998] 4 All SA 1 (A)
Judgment
HARMS JA
Registered trade marks are intended to be used and, if not used for a continuous period of five years, may be
removed from the register. This was provided for under section 36(1)(b) of the Trade Marks Act 62 of 1963 and
according to section 27(1)(b) of the Trade Marks Act 194 of 1993 is still the law, albeit in slightly different terms. In
the Court below the trade mark under consideration, Valentino, suffered the fate of removal on the ground of non
use (per Smit J in the Transvaal Provincial Division) and the present appeal against that order is with its leave. Since
the proceedings were initiated during 1980 and that is not a typographical error the matter has to be decided in
terms of the 1963 Act and all further statutory references are to it.
The trade mark Valentino was registered on 28 November 1973 under registration number B73/6127 in class 25
in relation to certain items of clothing. The proprietor of the mark was and is the appellant, a Dutch body corporate,
whose original name was Globelegance BV. Of importance to this case is that the trade mark is used on clothing
designed by a leading Italian couturier, Valentino Garavani. These articles of fashion are intended for the very
wealthy and not for the mass market. The appellant licensed certain continental concerns to manufacture readyto
wear Valentino clothing, and certain local fashion retailers imported and sold reasonable quantities since 1976. No
user agreement was registered under section 48 before the proceedings were launched, nor did the appellant
itself conduct any business under the mark in South Africa.
The first respondent, to whom I shall refer by name, "dealt" in men's clothing in Johannesburg. On 5 November
1979 he lodged in his own name an application for the registration of the trade mark Valentino, also in class 25 and
in respect of clothing. The registered trade mark was an obvious impediment to the success of Phillips's application
and in consequence the present proceedings for its removal on the ground of nonuse were launched at the
beginning of 1980. There the matter more or less rested until it was enrolled towards the end of 1995.
At the hearing the parties presented Smit J with an agreement. It, in essence, provided that the appellant
intended to argue two points in limine, one relating to locus standi and the other to the lack of proof in the founding
affidavit of nonuse. The parties further agreed that if the appellant were to be unsuccessful on these points, the
outcome of the application was predetermined by the full court decision in AdcockIngram Laboratories Ltd v SA
Druggists Ltd and another 1983 (2) SA 350 (T) which was binding upon the court below. This judgment held, inter
alia, that use of a trade mark by someone other than its proprietor or a registered user is not "use" for the
purposes of section 36(1)(b) and cannot protect a trade mark from removal on the ground of nonuse. In the event
the points in limine were dismissed and, because of AdcockIngram, the application was granted and the removal of
the trade mark ordered.
The appellant raised two issues on appeal, namely
(1)
whether Phillips was, in the words of section 36(1)(b), a "person aggrieved" by the registration of the mark and
whether, consequently, he had no locus standi to apply for the removal of the appellant's trade mark, and
(2)
the correctness of AdcockIngram.
Phillips, on the other hand, contended in the argument filed (there was no appearance on his behalf) that this Court