(b)
does not introduce material alterations to the registration;
(c)
does not substantially affect the identity of the trade mark;
(d)
does not conflict with other existing marks, and does not broaden or extend the appellant's rights.
Subsection 2 deals with the procedure in applying for an amendment, and that to be applied if opposed. It is
common cause that the correct procedures were followed, and that the registrar dealt therewith in accordance with
those provisions.
In his judgment the registrar considered but, so it appears, did not necessarily rely upon the judgment in
Cointreau et Cie SA v Pagan International 1991 (4) SA 706 (A). To the extent that principles could be extracted and
applied to the matter under consideration, there can be no objection. It should, however, be borne in mind that the
Court there dealt with a trade mark infringement, and section 10(2) of the Act, and not with an amendment in
terms of section 34. The registrar correctly found upon the authority referred to that "it is not permissible to amend
a two dimensional representation of a rectangular bottle by adding a perspective, side, top, or bottom view. Such
an amendment will alter the mark in such a manner as to substantially affect its identity". Since the application then
under consideration did not involve the representation of a rectangular bottle or additions thereto, the application
could not be disposed of upon those grounds. I have previously referred to the findings made by the registrar, and
his reasons for having refused the application. Regulation 13 requires every application for the registration of a
trade mark to be accompanied by a representation of the mark, affixed to the prescribed form in the manner
provided for. Where the trade mark is not a word mark simpliciter, such additional representations as the registrar
may deem necessary shall be furnished. In the Cointreau case the various options open to a proprietor in depicting
the mark to be registered were discussed. At 711AB Corbett CJ explained that
"Where in the case of a container mark it is important that the registered mark be represented in a threedimensional
manner and/or from different perspectives, I think that advantage should be taken of the different options provided by the
regulations. These are wide enough, in my view, to cover perspective drawings or photographs from different angles."
Obviously, where a cylindrical object is involved no purpose would be served by producing photographs of side,
back or front views since they would certainly look the same. This would probably in most instances be true of the
top and bottom views also. If, in circumstances such as we are dealing with, a proprietor wishes to improve the
representation by submitting perspective drawings so as to clarify the mark, the procedure provided for in section
34 appears to be eminently suited. There is nothing in the Act to prohibit a proprietor from amplifying, or as in this
case, from clarifying or improving upon the representation as registered, by submitting drawings, provided that in
so doing the identity of the mark is not substantially affected. The relevant issue involved is simply whether or not
the mark has been substantially affected.
Page 129 of [1997] 3 All SA 125 (T)
In Cluett Peabody & Company Inc v McIntyre Hogg Marsh & Co Ltd 1958 RPC, Upton J explained that "each case
must depend on its own facts. It is really a matter of impression" [at 355]. The Full Bench of this division adopted a
similar approach in Bernstein Manufacturing Co (1961) (Pvt) Ltd v Shepherdson 1968 (4) SA 386 (T), and at 389B
referred with approval to the judgment of Upton J. Although the Full Bench there dealt with an application for partial
expungement on the grounds of nonuse, as opposed to an application in terms of section 34, it is authority for the
proposition that each case must be considered on its own facts, and that little or no assistance can be obtained
from other cases.
In deciding whether or not the mark in issue was substantially affected or not, Cillie J as he then was, adopted
what has since become known as the arresting features test. At 389H it was held that:
"When the two marks are considered side by side it is clear that the mark used has retained the arresting features of the
mark registered and that, if they are put on different articles of clothing, they will identify those articles with the same
proprietor. I agree with the Registrar that the mark as used is a version of the registered mark which has not been
substantially altered".
The question to be asked and answered is therefore whether the mark retains it[s] arresting features, and in
considering the question, the two marks are to be physically inspected, side by side. This judgment was followed
and the arresting features test was adopted and applied by Schutz J, as he then was, in��United Bank Ltd v Standard
Bank of SA Ltd 1991 (4) SA 810 (T), where it was required, in an infringement application, to consider the meaning
and effect of the words "not substantially affecting its identity" which are used in section 39(1).
I am satisfied that this is the test to be applied in section 34 applications also, where it has to be established
whether the mark is substantially affected by the proposed amendment.
If one were to apply the visual test of comparing the existing registration with the proposed amendment in the
matter under consideration, and leaving aside for the while the evidence contained in the affidavits, one finds on
the one hand a twodimensional representation of the perspective view of a container, in the form of a photograph
"Z". In general appearance there is no difference between that representation and the representation in the form
of the drawing entitled perspective view, depicted on "X". In both one cannot see the other side of the image
reproduced, and it is therefore impossible to determine with certainty what the other side, be it the front or the
back, looks like. One can also not determine with any amount of certainty what the bottom looks like nor is it
possible to determine what it looks like from the side. Looking at the top in particular, one may be left with the
impression that in both representations the container may be elliptical or ovalshaped, but having regard to the fact
that one sees it in the perspective view, one appreciates immediately that that impression is deceptive. One then
realises that the container must be cylindrically shaped as opposed to oval. If it were oval shaped, the ellipse would
have been more pronounced. It should be borne in mind that one actually sees more than 50% of the container,
and the general impression is certainly that it is cylindrical in form. Once it is accepted that the container is