Luster Products Inc v Magic Style Sales CC
 1 All SA 327 (A)
29 November 1996
Corbett CJ, Nestadt, HArms, Schutz anD Plewman JJA
JJF Hefer and I Potgieter
1997 (3) SA 13 (A)
. Editor's Summary . Cases Referred to . Judgment .
Trade Mark Trade Marks Act 62 of 1963 Sections 16(1) and 33(1) Whether a mark is rendered confusing due to
other persons using it in a manner contrary to the interests of the trade mark proprietor In the absence of
blameworthiness on the part of the proprietor, no case for expungement of an entry may be made.
Trade Mark Trade Marks Act 62 of 1963 Section 44(1) A trade mark is deemed to be infringed if the unauthorised
use of a mark resembling it is likely to deceive or cause confusion/injury/prejudice to the proprietor of the trade mark.
The Appellant, an American corporation which manufactured and distributed hair care products and cosmetics, was
the proprietor of South African trade mark 84/6404 registered in part A of the register in respect of goods in class 3.
In December 1990, the Appellant noticed that the Respondent (a South African close corporation in the same
business as the Appellant) was marketing some of its products using a mark, "SCurl" ("the mark"), thereon which it
considered an infringement of its registered trade mark. The Respondent was formally requested to desist from
using the mark. Pursuant to a refusal of such request, the Appellant, in 1992, applied for an interdict restraining the
Respondent from infringing its trade mark. The Respondent sought the expungement of the Appellant's mark in
terms of sections 16(1) and 33(1) of the Trade Marks Act 62 of 1963 ("the Act"), alternatively, an order directing
the entry of a disclaimer of "any right to the exclusive use of the term 'SCurl' apart from the special representation
as depicted in the mark". The Respondent contended that the mark denoted a particular hair style and that various
manufacturers of hair products had used the term descriptively on their products. The court a quo refused the
Respondent's main counterapplication but ordered the entry of the disclaimer sought. The main application was
dismissed. The Appellant appealed against the dismissal of the main application and the granting of the alternative
counterapplication. The Respondent crossappealed against the refusal of the main counterapplication.
Held The Court considered the Respondent's counterapplication. In terms of section 16(1) of the Act, the
registration of any matter as a trade mark, which would be likely to deceive or cause confusion or would otherwise
be disentitled to protection in a court of law, would be unlawful. Section 33(1), read with section 42, provides that
an aggrieved person may apply to the court for an order expunging or varying an entry wrongly made in the
register which was likely to deceive or confuse. Section 42 provides that the original registration of the trade mark
in part A of the register will, after the expiration of seven years, be taken to be valid unless it was obtained by
fraud, or the trade mark contravenes section 16.
Page 328 of  1 All SA 327 (A)
The first question that the Court addressed related to whether or not, in the light of the decision in the case of
AdcockIngram Laboratories Ltd v SA Druggists Ltd and another 1983 (2) SA 350 (T), the postregistration evidence
could be relied upon. The court ruled that the decision in the Adcock case, that postregistration facts cannot be
relied upon, was wrong and should be overruled.
The Court raised a second question: whether or not a mark was rendered confusing because other persons had
used it in a manner which was contrary to the interests of the trade mark proprietor. The Court referred to the
leading English authority on the matter, GE Trade Mark  RPC 297, and pointed out the close parallels between
our trade mark legislation and that of the 1938 English Trade Marks Act. In the GE Trade Mark case, Lord Diplock
concluded that (i) the fact that the mark was entered in the register was prima facie evidence of the right of the
registered proprietor to the exclusive use of the mark, (ii) if the mark was likely to cause confusion, it could be
expunged from the register as an "entry made in the register without sufficient cause" and, (iii) the court had a
discretion whether or not to expunge a mark. The Court also referred to the Australian case of New South Wales
Dairy Corporation v Murray Goulburn Cooperative Company Limited 18 Intellectual Property Reports 385, and
concluded that, in the absence of blameworthiness on the part of the proprietor, no case could be made out for
expungement. Section 16 clearly did not provide the Respondent with a cause of action entitling it to claim
expungement of the mark. The crossappeal was dismissed.
The Court also considered the appeal against the granting of the Respondent's alternative claim. The Court
addressed the question of whether or not the provisions of section 18(b) of the Act was applicable. In terms of the
said section, if a trade mark contains "matter common to the trade or otherwise of a nondistinctive character" the
court may require the entry of a disclaimer as a condition of it remaining on the register. The Court found that the
court a quo had erred in placing reliance on the view that section 42 was not a bar to relief in terms of section 18.
The provisions of section 42 were quite clear and the order of the court a quo was dismissed.