agents of the first respondent, four to the managing director and three to appointed agents of the South African
distributor and one to Mr Hein Punt who had been contracted by the second respondent to conduct certain trials on
the PERLAN product). The remaining copies were taken back to the United Kingdom by the overseas manager. In an
affidavit by a Mr Dane, the senior technical advisor of the first respondent, the deponent states that the first
respondent was not in any way involved in the publication or the distribution of the brochure. He admits that the
first respondent sent out invitations for the session in Stellenbosch, but says that this was done at the request of
the second respondent and that he and the first respondent were not aware of what the nature of the
presentation would be. Furthermore, the first respondent did not know that any reference would be made to the
brochure or that copies would be given to anyone.
Ms Jansen, who appeared for the applicants together with Mr Gamble, sought to counter this evidence by asking
me to infer on the probabilities that the first respondent must have known that the brochures would be handed
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out. This, she said, followed because the first session was held at the first respondent's premises and that even if
the first respondent had not known what was going to happen at that session, it must have known that the
brochures would be handed out again at the industry function which was held in Stellenbosch a few days later. Mr
Dane had attended the training session and must therefore have foreseen that brochures would again be handed
out. Mr Louw, who together with Mr Cullabine appeared for the respondents, pointed out that such a conclusion
would amount to nothing more than speculation. There is no evidence to support the conclusion which Ms Jansen
asks me to make; on the contrary there is the direct evidence of Mr Dane that he did not know what was going to
be said or what, if anything, was going to be handed out at the industry function. I am not prepared to find that the
probabilities are such as to justify the inference which Ms Jansen asks me to draw for it is at least arguable that the
South African distributor would not have been a party to the arrangements for the session and the function
organised and presented by its overseas principal. Furthermore, the attendees at the industry function were to be
drawn from a different group of persons from those who attended the training session. This could be reason why Mr
Dane might not expect brochures to be handed out at the function.
The relief under this heading is sought as a matter of urgency, no doubt because it has been lumped together
with the other relief which is sought and for which there is a basis of urgency. The fact, however, is that there is no
basis whatsoever for it being heard urgently nor has any case for urgency been made out in the papers, nor am I
satisfied that on the papers the plaintiff has made out a case for the relief sought. At best for the applicant there
may be a dispute of fact which could possibly be resolved by the hearing of oral evidence, but to my mind the
applicants' case is not strong enough to justify my exercising my discretion in
View Parallel Citation
making such an order. Accordingly the prayer for a rule nisi to be issued for the first respondent to show cause why
it should not be declared to be in contempt of this court cannot succeed.
The infringement application
The applicants' case is that the mere unauthorised use of its registered trade marks PROMALIN and ABBOTT by the
first respondent or the respondents amounts to an infringement of its trade mark rights in terms of section 34(1)(a)
of the 1993 Act. It also contends that by comparing the PERLAN product with its PROMALIN product, the first
respondent has also infringed its trade mark registration. Section 34(1) reads as follows:
"34.
Infringement of a registered trade mark.
(1)
The rights acquired by registration of a trade mark shall be infringed by
(a)
the unauthorised use in the course of trade in relation to goods or services in respect of which the trade
mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or
cause confusion;
(b)
the unauthorised use of a mark which is identical or similar to the trade mark registered, in the course of
trade in relation to goods or services which are so similar to the goods or services in respect of which
the trade mark is registered, that in such use there exists the likelihood of deception or confusion;
(c)
the unauthorised use in the course of trade in relation to any goods or services of a mark which is
identical or similar to a trade mark registered, if such trade mark is well known in the Republic and the
use of the said mark would be likely to take unfair advantage of, or
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be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding
the absence of confusion or deception: Provided that the provisions of this paragraph shall not apply to a
trade mark referred to in section 70(2)."
Section 34(2) to which I will in due course refer lists the instances of bona fide use of a trade mark which will not
amount to infringement.
Regard must also be had to the following definitions appearing in section 2 of the 1993 Act.
"'Trade mark' ... means a mark used or proposed to be used by a person in relation to goods or services for the
purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same
kind of goods or services connected in the course of trade with any other person;"