acquired by registration of a trade mark may be infringed. In so doing it impliedly confers upon the proprietor the
exclusive right to use the mark in relation to the goods or services in respect of which it is registered. The trade
mark in the instant case confers upon the First Respondent the exclusive right to use the mark throughout the
whole of South Africa in relation to, inter alia, restaurant and café services.
It was common cause that the use of the name Nino by the Applicant in the course of its trade in relation to Nino
Camps Bay was unauthorised. It was also common cause that the name Nino so nearly resembled the First
Respondent's mark as to be likely to cause confusion. The First Respondent had established prima facie a n
infringement by the Applicant in terms of section 34(1)(a) of the Act.
The section 34(2)(a) defence
Section 34(2)(a) of the Act provides that a registered trade mark is not infringed by "any bona fide use by a
person of his own name, the name of his place of business, the name of any of his predecessors in business, or the
name of any such predecessor's place of business."
This section is subject to two provisos. Firstly it does not apply to the name of any juristic person whose name
was registered after the date of registration of the trade mark. This proviso does not apply in the instant case as
the Applicant's trade name was registered before the date of registration of the trade mark. The second proviso is
that such use must be "consistent with fair practice". In order
Page 531 of [1998] 3 All SA 527 (C)
to succeed with this defence it must be established that: (i) the Applicant was using its own name, the name of its
place of business, the name of a predecessor or the predecessor's place of business, (ii) that such use is bona fide
and (iii) that it is consistent with fair practice.
The Applicant contended that it was using its own name. Section 34(2)(a) seeks to protect the use by a person
of his own name. This section would extend to the use by a company or close corporation of its registered name.
What is generally required is the use of the full name. The use of a surname does not suffice. In the instant case
the Applicant was not using its full name but a nickname. The Applicant was therefore not using its own name as
contemplated by section 34(2)(a) and the first requirement was not met.
The Court further held that the Applicant's use of the name Nino was not bona fide within the meaning
contemplated by the section. Bona fide use in section 34(2)(a) means ". the honest use by the person of his own
name without any intention to make use of the goodwill which has been acquired by another trader".
In casu the Applicant decided to open Nino Camps Bay with full knowledge of the First Respondent's rights in
respect of the trade mark and its use of the name Nino in its franchise business. The Applicant was aware of the
First Respondent's opposition to its use of the name in Camps Bay. For the reasons set out above the Court did not
regard the Applicants use of the name Nino as being consistent with fair practice as contemplated by the second
proviso to section 34(2)(a).
The section 36(1) defence:
The underlying purpose of this section is to prevent a proprietor of a trade mark from exercising his rights merely
on the basis of priority of registration and it preserves whatever commonlaw rights there may be antecedent to
the rights of the registered proprietor.
The Applicant could only rely on this section if it had made continuous and bona fide use of the trade mark from a
date earlier than the use of the trade mark by the proprietor or his predecessor in title or from a date prior to the
registration of the trade mark in the name of the proprietor or his predecessor in title, whichever is the earlier. In
casu the First Respondent and its predecessor in title made use of the trade mark prior to the registration thereof
and the relevant date was determined by such use. The Applicant was unable to establish its prior use as required
by the section.
The Court granted the second application and held that the Respondents were entitled to confirmation of the
rule nisi and to the interdict sought.
Notes
For Trade Marks, see LAWSA (Vol 29, paragraphs 1276)
For Competition, see LAWSA Reissue (Vol 2, paragraphs 376412)
Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed.)
South Africa
Ashby and another v Fernandes 1959 (3) SA 770 (W)
Borstlap v Spangenberg en andere 1974 (3) SA 695 (A)
Page 532 of [1998] 3 All SA 527 (C)
Brian Boswell Circus (Pty) Ltd and another v BoswellWilkie Circus (Pty) Ltd 1985 (4) SA 466 (A) F