Ritz held that since the applicant for removal neither traded nor had any genuine intention to trade in goods in
those classes, it meant that it was not a person aggrieved. (This reasoning does not necessarily apply to an
application for a defensive registration as was indicated in Mars.) On the evidence in the present case it is clear that
Phillips has never traded or had any intention to trade under the mark Valentino. Phillips simply failed to distinguish
between himself and companies and a close corporation in which he had some undisclosed interest and with which
he had some undefined relationship. The question then arises whether Phillips as controller, shareholder or member
(sole or otherwise) of these entities can be a person aggrieved within the meaning of the term in s 36. Francis
George Hill Family Trust, dealing with Treasury regulations, answered a similar question in the negative as did Jeeva
in regard to insolvency. The crux of these cases is that the notion of a company as a distinct legal personality is no
mere technicality (Francis George Hill Family Trust 102G). On the other hand, Ritz (314H316B) with reference to
recent trends in English courts (to which can be added the 1969 Australian patent
Page 6 of [1998] 4 All SA 1 (A)
decision in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company 120 CLR 136) opened the
possibility of a more relaxed approach which can be considered when dealing with companies bound together in a
group. The question then arises whether a relaxation can be justified in terms of the Act. Put differently, is it
possible that Phillips's application for the registration of the mark can succeed?
Section 20(1) lays down that an applicant for a trade mark must be a person claiming to be the proprietor of a
mark "used or proposed to be used by him" (emphasis added). (See in general on the meaning of this provision:
Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A) 744745.) The reason for this requirement is to be found
in the definition of a "trade mark" in section 2, namely that it means a mark "used or proposed to be used" for the
purpose of indicating a connection between, on the one hand, the trademarked goods or services and, on the
other, "some person having the right, either as proprietor or as a registered user". (I have omitted important parts
of the definition simply because they are not of consequence in the present context.) Section 24(1) permits of two
exceptions to the requirement of section 20(1) that the proprietor himself must use or intend to use the trade
mark. The first is if the registrar is satisfied that a body corporate is about to be constituted and that the applicant
intends to assign the trade mark to it with the view to its use by the body corporate. The second is if the application
is accompanied by an application for the registration of a person as registered user of the trade mark and the
registrar can be satisfied that the proprietor intends it to be used by such a person. Neither applies to this case.
These provisions are incompatible with a relaxation of the rule in Francis George Hill Family Trust. The first explicitly
applies only if the body corporate is not yet in existence at the stage when the application is made. It therefore
presupposes that an application for a trade mark may be made "on the behalf of" a body corporate, but only under
carefully specified circumstances. The second presupposes that someone other than the proprietor personally may
intend to use the trade mark, but then he has to be a registered user and not merely a licensee or someone under
the control of the proprietor. Of more than mere historic interest are sections 23 and 24(1)(c) which were both
repealed during 1971. They provided that where a holding company or its nominee owned all the issued shares in
one or more subsidiary companies, use of a trade mark by the latter, for trade mark application purposes, was
deemed to be use also by the holding company and that the holding company in such circumstances could apply for
registration of the trade mark in its own name even if it had not used or intended to use the trade mark. What this
establishes is that the statute initially did pierce the corporate veil, but only in one defined situation. The repeal of
this exception indicates a clear intention not to allow the piercing of the corporate veil.
My approach may seem technical and to turn on too close a reading of the Act. It should, however, be borne in
mind that we are concerned with a 1963 statute and that it has to be interpreted as at its date. It was based upon
the 1938 British Trade Marks Act which in turn saw the light of day because of the report of the Goschen Committee
and the frame of mind concerning trade marks then existing (cf. "Holly Hobbie" Trade Mark [1984] RPC 329 (HL) at
350 lines 3643 and at 355 lines 1036; Chowles & Webster South African Law of Trade Marks 2 ed p 168 and
follows). Since then there have been major strides in trade techniques and technology and concepts and
perceptions have undergone material changes. The function of a trade mark as a badge of origin has changed and
this change is reflected in the 1993 Act (cf. Webster in 29 LAWSA par 18;
Page 7 of [1998] 4 All SA 1 (A)
Sodastream Ltd and another v Berman Brothers (Pty) Ltd 1984 (4) SA 425 (T) 429FH; Berman Brothers (Pty) Ltd v
Sodastream Ltd and another 1986 (3) SA 209 (A) 236GI). The position of an unregistered licensee has also changed
but all these factors do not permit us to ignore the expressed intention of the legislature in its proper context.
I therefore conclude that the court below should have found that there was no prospect that Phillips could
succeed in his application for the registration of Valentino, either in his own name or in that of another. This means
that Phillips was not a person "aggrieved" and that his application for the removal of the appellant's trade mark
should have failed at the first hurdle. A consideration of the second issue becomes academic.
The following order is made:
1.
The appeal is upheld with costs.
2.
The order of the court below is set aside and replaced with an order dismissing the application with costs.
3.
All costs orders include the costs consequent upon the employment of two counsel.
(Hefer, Nienaber, Howie and Plewman JJA concurred in the judgment of Harms JA.)
For the appellant: