Page 93 of [2014] 2 All SA 90 (WCC)
with the respondent's defence, and then the counterapplication, since even if the defence succeeds, the
counterapplication still has to be considered as it is not solely a defence to the application.
[6] The respondent's defence is that section 36(1) of the Act bars the applicant from instituting infringement
proceedings against the respondent, as its predecessor had commenced using the trade mark prior to the
applicant applying for registration of INFINITY in its (the applicant's) name. The applicant alleges in the founding
affidavit deposed to by Mr Rahimtola, that it commenced its use of the trade mark INFINITY during 1995.
Nothing turns on the date applicant commenced using the trade mark INFINITY as it bases its claim squarely
on the registration which is dated 15 April 2008 (this is confirmed by a certificate from the Registrar of Trade
Marks attached to the applicant's documents marked exhibit M2). The 15 April 2008 is, therefore, the first date
from which the applicant can claim the exclusive right to use the trade mark INFINITY in South Africa.
[7] The relevant portion of section 36(1) of the Act, provides that:
"Nothing in this Act shall allow the proprietor of a registered trade mark to interfere with or restrain the use by any
person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that
person or a predecessor in title of his has made continuous and bona fide use of that trade mark from a date
(a)
anterior to the date of firstmentioned mark in relation to those goods or services by the proprietor or a
predecessor in title of his; or
(b)
to the registration of the firstmentioned trade mark in respect of those goods or services in the name of the
proprietor or a predecessor in title of his,
whichever is the earlier, or to object (on such use being proved) to the trade mark of that person being registered in
respect of those goods or services under section 14."
Webster & Morley Webster & Page: The South African Law of Trade Marks, Company Names and Trading Styles
(4ed) paragraph 12.45.1 (pages 1279) correctly argue that the aim of the section is to "preserve common
law rights that are antecedent to the rights of the registered proprietor". The Act does not invest a prior user
with a right it derives from the common law. How does a prior user obtain the common law right to use the
trade mark? Before answering this question, I will refer to the facts.
[8] The applicant, through the founding affidavit of Mr Rahimtola, obviates the necessity for the Court to rely on
the PlasconEvans rule referred to earlier to establish when the respondent's predecessor's use commenced.
The deponent swears that:
"During 2006, I saw INFINITY tyres at an exhibition but was unable to trace the products on sale in the trade. In 2007,
the Applicant noted limited sales of the INFINITY tyres but was not aware of the activities that gave rise to those
sales. However, in 2008 the Applicant heard that INFINITY tyres were being imported into South Africa by the
Respondent on an increasing scale" (paragraph 14).
This evidence confirms the respondent's version that it and its predecessor has made "continuous and bona
fide use since July 2006, to date" (paragraph 14 of Mr De Villiers answering affidavit). The question still arises,
however, what is the basis of the respondent's rights at common law?
Page 94 of [2014] 2 All SA 90 (WCC)
[9] The respondent's right to use the trade mark INFINITY was conferred by implication by the person in China
who supplied it with the tyres it imported, whomsoever that person was. It is well established there is no
need for anyone to be aware of the identity of the trade mark proprietor: in Birmingham Vinegar Brewery Co v
Powell (1896) 13 RPC 235, 250 the Court held that the public may be misled by mistaking one class of goods
for another even though they may not know the names of the makers of either (clearly each class consists of
the one person's goods. Blanco White & Jacob Kerly's Law of Trade Marks and Trade Names (12ed), Sweet &
Maxwell, London (1986) states that:
"It is not necessary to show that the customers who knew the goods of the plaintiff's firm by a particular name or get
up knew anything whatever about the plaintiff. It is immaterial that they did not even know his name, for it is
sufficient to prove that purchasers of his goods recognised, by the use of the marks in question in connection with
them that they were goods of a particular class and show that such class is, in fact, constituted by his goods" (page
373, paragraph 1632; my emphasis).
The existence of implied consent to use a trade mark granted by placing goods on the market without any
restrictions on exporting was confirmed by the Appellate Division in Protective Mining & Industrial Equipment
Systems (Pty) L t d (formerly Hampo Systems (Pty) Ltd) v Audiolens (Cape) (Pty) L t d ( t h e "Pentax case")
1987 (2) SA 961 (AD) [also reported at [1987] 2 All SA 173 (A) Ed]. Frank & Hirsch (Pty) Ltd v Roopanand Bros
1987 (3) SA 165 (D) [also reported at [1987] 3 All SA 122 (D) Ed] establishes that a trade mark proprietor
who sells goods without restriction unconditionally consents to it being resold in that form under the mark
(page 185B).
[10] The applicant in the founding affidavit gives no indication of the source of the goods which it markets under
the trade mark INFINITY and it does not allege that it is the manufacturer of the wheels which it markets
under that trade mark. The applicant has, throughout the proceedings, elected not to provide any direct
indication of its relationship to the INFINITY tyres which it markets. It is so highly improbable that the
applicant would have described itself as "a trader in wheels, tyres and related products" had it manufactured
the goods in which it trades that a relationship of that type is excluded. The significance of this finding is that
the applicant is also an importer of the tyres which it markets under the INFINITY trade mark. I agree with the
submission of Mr Micau for the respondent in that had the applicant claimed any common law rights predating
its use of the trade mark, the possibility of an action for passingoff must have been canvassed with its legal