Abbott Laboratories and another v UAP Crop Care (Pty) Ltd and others
[1999] 1 All SA 502 (C)
Division:
Cape of Good Hope Provincial Division
Date:
10 December 1998
Case No:
13459/98
Before:
Cleaver J
Sourced by:
G Josman SC and ML Sher
Summarised by:
L Bejai
Parallel Citation:
1999 (3) SA 624 (C)
. Editor's Summary . Cases Referred to . Judgment .
Trade Marks Infringement of Section 34(1)(a) Trade Marks Act 194 of 1993 Applicants had to establish the
unauthorised use of trade marks in the course of trade in relation to goods or services in respect of which the trade
marks were registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause
confusion.
Editor's Summary
The First Applicant was the proprietor in South Africa of two trade marks that were registered in terms of the
provisions of the Trade Marks Act 194 of 1993 ("the Act") viz: "PROMALIN" and "ABBOT", relating to agricultural
chemicals. The Second Applicant was the wholly owned subsidiary of the First Applicant and was the latter's
exclusive licensee in South Africa. The Second Respondent was the British producer of chemicals in direct
competition with the First Applicant. The Second Respondent was the producer of a product called "PERLAN" which
was distributed in South Africa by the First and Third Respondents.
The products PROMALIN and PERLAN were used in the farming of apples to improve certain aspects of fruit
quality. During 1997 the First Applicant obtained an interdict against the First Respondent preventing it from
infringing the trade mark PROMALIN.
The events which gave rise to the instant application were as follows: The First Respondent produced a brochure
for a training session of its employees in which the product PERLAN was said to be a better product than PROMALIN
and further the trade marks PROMALIN and ABBOT were used without the auhtority of the First Applicant.
Page 503 of [1999] 1 All SA 502 (C)
The First Applicant alleged that the mere use of the marks PROMALIN and ABBOT in the brochure constituted a trade
mark infringement in terms of section 34(1)(a) of the Act and by representing that the mark PERLAN was registered
in South Africa, the Respondents were competing unlawfully with the Applicants. The Applicants contended further
that the First Respondent was guilty of contempt of Court because the training sessions held constituted a breach
of the court order obtained in 1997.
Held Contempt of court: The First Respondent's defence was that it did not compile the brochure and was not
responsible for its distribution and accordingly it was not in breach of the court order. The Court held that the
Applicants had failed to make a case for contempt of court and according the claim was unsuccessful.
Infringement application: The Applicants alleged that the mere unauthorised use of its registered trade marks
PROMALIN and ABBOT by the Respondents amounted to an infringement of its trade marks rights in terms of section
34(1)(a) of the Act. Further the Applicants alleged that by comparing the products PERLAN with PROMALIN, the First
Respondent had also infringed its trade mark registration.
The Court held that in order to succeed in terms of section 34(1)(a) of the Act the Applicants had to establish the
following in respect of the trade marks: (i) the unauthorised use (ii) in the course of trade (iii) in relation to goods or
services in respect of which the trade marks were registered (iv) of an identical mark or of a mark so nearly
resembling it as to be likely to deceive or cause confusion. The Court found that the Applicants had succeeded in
establishing (i) and (iv) and the Respondents had conceded (ii). The Court then considered whether Applicants had
proved the requirements of (iii) above.
In relation to goods: Section 2(3)(a) of the Act provided that references to the use of a mark in relation to goods
shall be construed as references to the use thereof, or in physical or other relation to such goods. The Court held
that the use of the mark PROMALIN and ABBOT in the brochure was clearly used to identify the product and
accordingly the requirement in relation to goods had been met.
Unlawful competition: The Applicants alleged that by representing in the brochure that PERLAN was registered in
South Africa, the Respondents were competing unlawfully with the Applicants. Section 62(1) of the Act makes it an
offence for any person to represent that a mark is registered if it is not so registered and section 62(2) provides
that the symbol ® shall be deemed to import a reference to a registration in the register. The Court referred to
previous case law and concluded that the Applicants had failed to establish and prove the necessary requirements
proving unlawful competition.
The Court accordingly granted interim relief in favour of the Applicants.