This is an appeal from a decision of the Registrar of Trade Marks in proceedings brought in terms of section 34 of
the Trade Marks Act 62 of 1963, refusing the amendment of two trade marks registered in the appellant's name. It
is common cause that the appellant was at the time and still is the registered proprietor of the two trade marks in
question, being Trade Mark registration numbers 85/5521 in class 3 and 82/5522 in class 5. Both are container
marks.
The marks as registered consist in each instance of a single twodimensional photograph of the container. The
manner in which marks are to be represented for registration purposes, are prescribed in reg 13 of the regulations
promulgated in terms of section 80 of the Trade Marks Act 62 of 1963. It is required that the representation be
clear and distinct, and provides for different ways in which this can be effected. Since the marks were subsequently
registered, it must be assumed that they met with these requirements of clarity and distinctiveness.
During May 1994 the appellant advertised its intention to amend the registrations to the form shown on Trade
Mark Form TM24, being the form prescribed in terms of reg 68 to be used in applications to add to or alter a trade
mark in terms of section 34(1). The formal application does not form part of the record, but copies thereof together
with copies of the proposed amended representation were made available to us. I should add that the copies of
the representation now furnished are of an infinitely better quality than the copies contained in the record. I have
marked the copies now supplied with an "X", and wherever reference is made to the proposed amendments, it shall
be a reference to that exhibit. What the applicant sought to do was to introduce drawings of the perspective view,
and of the side, top and bottom views of the container, as
Page 127 of [1997] 3 All SA 125 (T)
opposed to the single twodimensional photograph originally submitted, the suggestion being that the amendments
were required "To depict the trade marks with more clarity by showing the proper views (i.e. perspective view, side
view, bottom view and top view)".
The respondent opposed the application, claiming that the container was not clearly identified and that the
identity of the mark was not apparent from the single representation in the register. It was therefore firstly claimed
that the registration was invalid. Secondly it was suggested that the proposed amendment substantially affected
the identity of the trade mark, so much so that it no longer applied to the container registered. Furthermore, so it
was claimed, details were changed, and that the amendment contravened the provisions of section 34 of the Act,
and in the amended form would also contravene the provisions of section 10(2) of the Act. All of this was denied by
the appellant. It was its case that the amendment was sought to ensure clarity.
Upon the facts of the case the registrar found that the representation as sought to be amended, introduced
material alterations, thereby substantially affecting the identity of the trade mark, and for that reason refused the
application. That refusal and the order issued constitute the subject of this appeal.
Section 34 of the Act provides as follows:
"34.
Alteration of registered trade mark.
(1)
The registered proprietor of a trade mark may, on payment of the fee prescribed, apply in the prescribed
manner to the registrar for leave to add to or alter the trade mark in any manner not substantially affecting the
identity thereof, and the registrar may refuse leave or may grant it on such terms and subject to such
limitations as he may think fit.
(2)
(a)
The registrar shall require the applicant to advertise the application in the prescribed manner and if within the
prescribed time from the date of the advertisement any person lodges a notice of opposition to the
application in the prescribed manner with the registrar, the registrar shall, after hearing the parties, if
they wish to be heard, decide the matter.
(b)
The provisions of sections twentysix to thirty, inclusive, shall mutatis mutandis apply to any proceedings
under this section."
At our request an attempt was made to manufacture photographic copies, (as opposed to photostatic copies) of the
original representation as it appears in the official register. The representations and drawings appearing in the
record are in most instances, fourth or fifth copies of the originals. A quick reference to and a comparison of the
pictures appearing at pp 13, 16, 34 and 54 vividly illustrates the difficulty encountered. We were yet again furnished
with photostatic copies of the relevant documents, and we were assured that these were the best available.
Photographic copies have also been made available to us. We were given an opportunity of consulting the original
documents contained in the register, and have satisfied ourselves that the copies now supplied are of almost the
same quality as the originals. The copies of the original representation are marked "Z", and I shall refer to that
exhibit in this judgment.
As stated previously, it was the respondent's case before the registrar, as it is now also, that
(a)
the proposed amendment substantially affects the identity of the applicant's trade marks and therefore contravenes
the provisions of section 34 of the Trade Marks Act 62 of 1963;
Page 128 of [1997] 3 All SA 125 (T)
(b)
the applicant's trade marks as sought to be amended will be invalid in that they will contravene the provisions of
section 10(2), 10(1A) and 10(2) of the Trade Marks Act 62 of 1963.
The appellant on the other hand contends, as it had done previously, that the amendment sought
(a)
is required to clarify the registration;