Page 287 of [2010] 2 All SA 284 (SCA)
The expungement claim
[5] Concerning the expungement claim, Spitz alleged that it had made extensive use of "its KG trade mark" over
many years before 7 March 2000 and that at that date it enjoyed a very substantial reputation and goodwill
in respect of goods falling in class 25 and that it, accordingly, had a prior right to the mark. Spitz, it should be
added, also filed an application for the "KG" mark in class 25 but that was only on 20 September 2001. Its
case was, consequently, that Turbek's registrations were liable to be revoked under section 10(16) of the
Trade Marks Act 194 of 1993, which provides that a mark may not be registered as a trade mark or, if
registered, is liable to be removed from the register if the registration of that mark (in this case Turbek's) is
contrary to existing rights of the person (Spitz) who filed a later application for registration of the same or
similar mark.
The trade mark infringement claim
[6] The trade mark infringement claim of Spitz was based on its trade mark registration in respect of the mark
"KG" in class 9 in respect of "optical devices, apparatus and instruments including spectacles, sunglasses,
frames and lenses". This registration (TM 2001/16484) postdates Turbek's and the claim was consequently
premised on two suppositions: first, that footwear is so "similar" to optical devices and the like that in use
there exists the likelihood of deception and confusion (section 34(1)(b)); and, second, because the use of any
identical or confusingly similar registered trade mark cannot infringe another registered mark (section 34(2)
(g)), that its application to revoke Turbek's registrations was to succeed.
The passingoff claim
[7] According to Turbek's counsel, the passingoff claim depended on Spitz's success in having its trade marks
revoked while Spitz's counsel, relying on a statement in Kellogg Co and another v Bokomo Cooperative Ltd
1997 (2) SA 725 (C) at 736J737A, submitted that a registered trade mark is not an "absolute defence" in
passingoff cases. In other words, as counsel submitted, Spitz could rely on passingoff to prevent Turbek
from using the "KG" trade mark even if it were unable to have the trade marks expunged.
[8] The effect of a registered trade mark on passingoff cases was first dealt with in Glenton and Mitchell v Ceylon
Tea Company 1918 WLD 118. It was an application for an interim interdict based on passingoff. The
respondent, unbeknown to the applicant, had registered a trade mark and relied on its registration in
opposing the application. Having found that the applicant had established a prior reputation in the mark as
registered, the court concluded that if a prima facie case was made out that the mark should not have been
on the register, an interim interdict could issue. In other words, registration is not a defence to a passingoff
claim if the claimant for interim relief is able to show that the register ought to be rectified by the removal of
the registration.
[9] Glenton and Mitchell (supra) relied for its conclusion on section 127 of the Patents, Designs, Trade Marks and
Copyright Act 9 of 1916 which provided that the provisions of that Act did not affect the rights of action
Page 288 of [2010] 2 All SA 284 (SCA)
against anyone for passingoff or the remedies in respect thereof. A preceding section, section 124, provided
that no one was entitled to institute trade mark infringement proceedings unless the trade mark was
registered. These provisions were taken over from the applicable UK Act. The purpose of section 127 was to
set to rest any doubt that may have been created by section 124 as to whether a person could rely on an
unregistered mark for purposes of passingoff (Sebastian's Law of Trade Mark (5ed) 1911 at 392) and it
recognised the practice that a trade mark could be removed from the register simultaneously with the grant of
an interdict or injunction on the ground of passingoff (op cit at 18).
[10] Section 43 of the Trade Marks Act 62 of 1963 (as amended in 1971) conjoined the provisions of sections 124
and 127, and the terms of section 127 became a proviso to those of section 124.1 In Solmike (Pty) Ltd t/a
Skipper's Cabin v West Street Trading Co (Pty) Ltd t/a Skipper Bar 1981 (4) SA 706 (D) at 711H712B [also
reported at [1981] 4 All SA 77 (D) Ed], after quoting from Glenton and Mitchell (supra), Page J said this:
"There is no authority quoted for the proposition that it is incumbent upon the person seeking relief for passingoff
under these circumstances to show that he is prima facie entitled to a rectification of the register. It seems to me,
with great respect, that the postulation of this requirement constitutes the introduction of an unnecessary and
irrelevant element into the plaintiff's cause of action. If the fact that the defendant is the proprietor of a registered
trademark is irrelevant to passingoff proceedings, the question of whether it is liable to expungement or not is
equally irrelevant. Of course, the fact that the use by the defendant of his registered mark constitutes passingoff will
ordinarily mean that the registration is liable to expungement or some other form of rectification; and it is normally
expedient for the plaintiff in such cases to move for the rectification (Kerly on Trademarks 10th ed paragraphs 1681
at 429430). But neither such rectification nor the right to obtain it is an element of the cause of action in passingoff."
[11] With all due respect to the learned Judge, an expert in trade mark law, I venture to disagree with his premise
and conclusion and I also do not understand why he made the statement in the context of the facts of that
case. It is true that there was no authority for the mentioned proposition in Glenton and Mitchell but there was
also no authority to the contrary. (The cases referred to by D Kitchen et al Kerly's Law of Trade Marks and Trade
Names (14ed) (2005) at paragraph 15209 are particularly unhelpful.) The Glenton and Mitchell proposition
appears to me to be eminently sensible having regard to the Act as a whole. I have already explained that
the purpose of the proviso is to confirm that the Act did not abolish the principles of passingoff, meaning in
context that the owner of a commonlaw or unregistered trade mark is entitled to enforce it with a passingoff
action. Such a party has, however, to suffer the disadvantages of nonregistration, for instance, it has to