(c)
The use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular,
as accessories or spare parts), provided the use is in accordance with honest practices in industrial or commercial
matters."
Jacob J, while recognising that section 10(6) was the provision in the United Kingdom Act which permitted
comparative advertising, nevertheless reasoned that permissible comparative advertising could also be brought
home under the provisions of section 11(2). He overcame the obvious inference which would follow from this
reasoning, namely that the provisions of section 10(6) and section 11(2) overlapped by saying:
"If there is overlap between the two provisions there is, and no matter. Their origins are different and one should not
be surprised by any overlap."
It is not necessary for the purposes of this judgment to comment on this observation, save to reiterate that the
provisions of section 10(6) are more onerous than the provisions of section 11(2). However, in as much as it is
accepted that section 10(6) of the United Kingdom Act defines what is
View Parallel Citation
acceptable comparative advertising, it is significant that there is no equivalent of this section in our Act.
Finally, when comparing the United Kingdom legislation with our own, it must be remembered that the United
Kingdom Act of 1994 implemented an EC Directive which makes simple comparisons of the Act with our Act
somewhat hazardous. For the above reasons, and having regard to the changes brought to our law in the 1993 Act
and the reasons for these changes, I am not prepared to accept the portion of Jacob J's judgment as a basis for
finding that comparative advertising is permitted in terms of our law.
As the case progressed it became clear that the only real difference between the parties was whether the use of
trade marks of the first applicant by the second respondent was use which constituted infringement in terms of
section 34(1)(a) of the Act.
Mr Louw contended that section 34(1)(a) did not apply because:
1)
there are no goods of the respondents upon which or in relation to which the trade marks ABBOTT or PROMALIN have
been used;
2)
even if it can be argued that the use of the applicants' marks in the brochures is use in other relation to goods, then
that use is in relation to the applicants' own goods (the argument based on the Protective Mining case (supra); and
3)
if the applicants argued that the use of the trade marks has resulted in a dilution of their trade mark rights, their
remedy was to be found in section 34(1)(c) and not in section 34(1)(a) of the 1993 Act.
Page 514 of [1999] 1 All SA 502 (C)
For the applicants to succeed in establishing an infringement of their rights under section 34(1)(a) they must
establish the following in respect of the trade marks registered in respect of services or goods:
1)
The unauthorised use
2)
in the course of trade,
3)
in relation to the goods or services in respect of which the trade marks are registered,
4)
of an identical mark; or
of a mark so nearly resembling it as to be likely to deceive or cause confusion.
The applicants have clearly succeeded in establishing 1) and 4) above. The respondents have conceded 2) and all
that remains therefore is the requirement that the use must have been in relation to the goods or services in
respect of which the trade mark is registered.
In relation to goods
Section 2(3)(a) of the Act provides 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. Webster and Page explained this to
mean:
"Use upon goods contemplates the application of the mark to the goods themselves whilst use in physical relation to the
goods covers use in physical juxtaposition to the goods such as use on containers or wrappers for the goods or on tickets or
tags attached to the goods. Use in other relation to the goods covers use physically divorced from the particular goods, but
of such a nature that it is identifiable with those goods."
This passage was quoted with approval by Eloff DJP, as he then was, in
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KMart (Pty) Ltd v KMart Corporation and the Registrar of Trade Marks, an unreported decision in the TPD handed
down on 18 December 1987. Webster and Page go on to say that "such use would include use on invoices or other
documents relating to the goods". For authority for this statement, see the cases quoted in note 1 at 48. In my
judgment, the reference in the brochure to the product to which the mark PROMALIN is applied is clearly such as to
identify the product with the trade mark and consequently the requirement that the use of the trade mark
PROMALIN in relation to goods has been met. The brochure also has a number of references to ABBOTT and to my
mind these references also identify ABBOTT products with ABBOTT, examples which appear in the brochure are: